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UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


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A     TREATISE 


THE   LAW   OF  PATENTS 


USEFUL    INVEK^TIONS. 


A  TREATISE 


THE   LAW   OF   PATENTS 


USEFUL  INVENTIONS 


IN    THE 


UNITED    STATES    OF   AMERICA. 


BY 

GEORGE    TICKNOR  CURTIS, 


COUNSELLOR  AT  LAW. 


BOSTON: 

CHARLES   C.   LITTLE   AND    JAMES  BROWN. 

1849. 


Entered  according  to  the  Act  of  Congress,  in  the  year  1849,  by 

George  T.  Cttrtis, 

In  the  Clerk's  Office  of  the  District  Court  of  the  District  of  Massachusetts. 


T 


CAMBRIDGE: 
PRINTED   BY   EOLLES   AND   HOUGHTON. 


CONTENTS. 


PART    I. 

The  Subject-matter  of   Patents,   and  the    Parties  entitled 

THERETO. 

CHAPTER  I. 

3 55 

Novelty  and  Utility 

CHAPTER  II. 

The  Subject  of  Invention  or  Discovery  .  .         •         .56  —  9 

CHAPTER  III. 
Unity  of  the  Subject-matter 94—102 

•CHAPTER  IV. 
The  Persons  entitled  to  take,  renew,  or  extend  Patents       103  —  119 


PART    II. 

Proceedings  to  Obtain,  Renew,  or  Extend  a  Patent. 


The  Specification 


CHAPTER   I. 

123  —  206 


6708^4 


Vi  CONTENTS. 

CHAPTER  II. 

Proceedings  at  the  Patent  Office       ....        207  —  221 

1.  Caveat  for  Incomplete  Invention. 

2.  The  Petition,  Oath,  Payment  of  fees. 

3.  Signatures  of  the  Secretary  of  State,  and  Commissioner. 

4.  Interfering  Applications. 

5.  Renewal  and  Amendment  of  Patents. 


PART  III. 

Transmission  of  the  Interest  in  Letters-Patent. 

CHAPTER  I. 
Of  Assignments  and  Licenses  ....         225  —  242 


PART    IV. 

Infringement  and  the  Remedy  therefor. 

CHAPTER   I. 
Infringement 245  —  309 

CHAPTER  II. 
Of  the  Remedy  for  an  Infringement  by  Action  at  Law      310  —  357 

CHAPTER  III. 
Of  the  Remedy  in  Equity  to  restrain  Infringements  358  —  400 


CONTENTS.  VU 

CHAPTER  IV. 
Evidence        .         .         .  .        .         .         .         .401  —  430 

CHAPTER  V. 
Questions  of  Law  and  Questions  of  Fact  .         .        431  —  448 

CHAPTER  VI. 
Jurisdiction  of  Congress  and  the  Federal  Courts  .         449  —  453 


APPENDIX. 

Laws   of  the  United  States   relating  to  Patents 

AND  THE  Patent  Office     .....        457  —  499 

Decisions  of   the   Hon.  Judge   Cranch  in  Cases  of 

Appeal  from  the  Commissioner  of  Patents    .         500  —  580 


PREFACE 


The  Mowing  work,  the  fruit  of  careful  studies  in  a 
department  of  jurisprudence  of  great  practical  import- 
ance, is  presented  to  the  Profession,  not  without  anxiety 
as  to  its  reception.     This  branch  of  the  law  is  so  pecu- 
liar, the    subjects  with  which   it   is    concerned    are  so 
abstruse,  and  so  much  caution  is  requisite  in  dealing 
with  its  principles  and  in  combining  them  into  a  system, 
that  no  writer  can  expect  wholly  to  satisfy  the  wants  of 
Hs  readers,  who  does  not  bring  to  its  treatment  a  force 
of  intellect  and  a  reputation  as  a  jurist,  which  entitle 
him  to  be  regarded  in  the  light  of  an  authority.     But 
it  cannot  be  my  hope,  as  it  is  not  my  desire,  to  escape 
criticism.     Looking  upon  the  law  as  a  science  of  vast 
practical  consequence  to  mankind,  and  desiring  to  dis- 
charge my  humble  debt  to  its  Profession,  I  shaU  grate- 
fuUy  receive,  from  any  competent  source,  any  sugges- 
tions of  errors  or  imperfections  in  a  work  designed  for 

practical  use. 

I  have  endeavored  to  walk  carefully  by  the  light  of 


PREFACE. 


adjudged  cases;  and  although  experience  has  taught  me 
that  the  Patent  Law  admits  of  less  reduction  to  precise 
rules  and  axioms,  than  any  *other  branch  of  jurispru- 
dence, I  have  endeavored  to  indicate  the  true  uses  of 
the  judgments  and  opinions  of  the  courts.     The  opinions 
and  decisions  of  judges  in  patent  causes  can  rarely  be 
treated  strictly  as  precedents,  unless  they  concern  the 
construction  of  a  statute.     They  are  to  be  regarded  as 
illustrations  of  the  principles  of  the  law,  when  applied 
to  a  particular  state  of  facts ;  and  consequently  a  pre- 
cise rule  is  rarely  to  be  eliminated  from  them,  by  separa- 
tion of  the  principle  from  the  facts  to  which  it  has  been 
applied,  unless  it  is  certainly  one  of  general  or  universal 
application.     Correctly  regarded,  indeed,  it  is  the  office 
of  all  adjudication,  to  apply  the  principles  of  the  law, 
with  nice  discrimination,  to  the  ever  varying  circum- 
stances of  different  states  of  fact,  and  not  to  rely  upon 
former  decisions,  as  absolute  precedents,  where  the  facts 
are  not  certainly  the  same.    But  this  is  peculiarly  and 
eminently  true,  in  the  administration  of  the  Patent  Law. 


Boston,  May  1st,  1849. 


INDEX    OF    CASES    CITED. 


Note.    The  cases  cited  in  this  work  from  Webster's  Patent  Cases  may  be  found,  in  most 
instajices,  in  other  reports,  by  consulting  this  index.  .      .  .    .u    „„„„ 

The  references,  unless  othe^^vlse  uidicated,  are  to  the  sections,  and  not  to  the  pages. 


Names  of  Cases. 


Alden  v.  Dewey 

Allen  V.  Rawsoa 
Allen  V.  Blunt 
Ames  V.  Howard 


Arkwright  v.  Nightingale 
Aruoll  V.  Perry-  . 


Bacon  v.  Jones   . 
Bainbridge  v.  "Wigley 
Baird  v.  Neilson 
Barker  v.  Harris 
Barker  v.  Shaw 
Barrett  v.  Hall     . 

Barrett  v.  Hall    . 
Basketl  V.  Cunningham 
Bean  v.  Snialiwood    . 
Bedford  V.  Hunt 
Bentley  f .  Fleming     . 
Bickford  f.  Skewes     . 
Blanchard  v.  Sprague 
Blanchard  v.  Sprague 

Bloxam  v.  Elsee 


Boston  Manufacturing  Company 

V.  Fiske 

Boulton  V.  Bull    .        .        .        • 


Boultonv.  Bull  (Ch.) 
Bovill  V.  Moore  . 


Bowman  v.  Taylor 
Boyd  V.  Brown  . 
Boyd  V.  McAlpin 
Bramah  v.  Hardcastle 
Brooks  V.  Bicknell 


Where  reported. 


1  Story's  R.  336     . 

1  M.  G.  &  Scott,  551 
3  Story's  R.  742     . 
1  Suiiiner,  482 


Webs.  Pat.  Cas.  61 ;  Dav.  P.  C.  37 
6  Jur.  433 


4  Mvlne  &  Cr.  433 

Cited  Grodson  on  Patents 

8  CI.  &  Fui.  72G    . 

Webs.  P.  C.  126  ;  Holroyd.  Pat.  60 

Cited  Gtxl.'^n  on  Patents 

1  Masou,  447 


1  Mason,  447,  475 

2  Eden's  Ch.  R.  137      . 
2  Story's  R.  408     . 

1  Mason's  R.  303  . 

1  Car.  &  Kirw.  587 
Webs.  Pat.  Cas.  218;  1  Q. 

2  Story,  164    . 

3  Sumner's  R.  535 


1  Car.  &  P.  558 ;  Dav.  Pat 
132     ...        • 

2  Mason,  119 

2  H.  Blackst.  492  ;  Dav.  Pat 
162     ..        . 

3  Ves.  140      . 

2  Marsh.  R.  211 ;  Dav.  Pat 
361      ...        • 

2  Ad.  &  EUis,  278 

3  M'Lean,  295 
3  M'Lean,  427 

Cited  Grodson  on  Patents 
3  M'Lean,  250 


938 


Cas. 


Cas. 


Cas. 


Where  cited  in 
this  Work. 


28,  30,  48,  174, 

358 
49 

181,  367,  375 
93,  1'26,  130,  133, 

150,  255,  258, 

387,  394 
254,  366 
(p.  309) 


315,  336,  346 

(p.  193) 

199 

49 

(p.  201) 

93,  94,  96, 

11-2,  142,  245 
122,  133,  219,  374 
338 

4,  26,  27,  95 
16,  2«,  33,  45, 383 
304,  306 
IM,  364,  366 
394,  403,  404 
84,  93,  126,  144, 

403,  404 


109, 


49, 130,  163,  378 

254 

72,  75,  76,  86,  93, 

100,  (p.  190,) 

339,  402 
329,  339 
94,  133,  (pp.  188, 

190,  195,  196, 

202,)  221 
199,350 
208 

191,  209 
(p.  198) 
122,  142, 162, 163, 

335 


xu 


INDEX    OF    CASES    CITED. 


Names  of  Cases. 


Brooks  V.  Byam 
Broolcs  V.  Stolley 
Brown  v.  Moore 
Bruiitoii  V.  Hawkes    . 

Bryce  v.  Dorr     .        .        .        • 

Campion  v.  Benyoa   . 

Carpenter  v.  Smith     . 

Carver  v.  Braintiee  Manufactur 
ing  Company  .        .        •        • 
Chanter  v.  Leese 

CoUartl  V.  Allison 

Cornish  v.  Keene 

Crane  v.  Price    .  •        • 

Crompton  v.  Ibbotson 
Crossley  v.  Beverley  . 

Crossley  v.    Derby    Gas    Light 
Company         .        .        •        • 
Cutler's  Patent,  in  re 
Cutting  V.  Myres 

Davis  V.  Palmer 

Davoll  V.  Brown 
Dawson  v.  FoUen 
Derosne  v.  Fairie 


Where  reported. 


Where  cited  in 
this  Work. 


Dilly  V.  Doig 
Dixon  V.  Moyer  . 


Dobson  V.  Campbell 
Doiland's  Case    . 


Earle  v.  Saw>-er 

Elliott  V.  Aston  . 
Evans  v.  Eaton  . 
Evans  v.  Eaton  . 


Evans  v.  Eaton  . 
Evans  v.  Hettich 
Evans  v.  Kremer 
Evans  v.  Weiss  . 


Fors\-th  V.  Riviere 
Fox,  ex  parte 


2  Story's  R.  525     . 

1  M'Lean,  523       .•        • 
Cited  Godson  on  Patents 
4B.  &Ald.  540     . 

3  M'Lean,  582       .        •        •        • 

4  B.  Moore,  71 ;  3  Brod.  &  B.  5    . 

Webs.  Pat.  Cas.  530 :  9  Mees.  & 
Welsh.  300         .... 

2  Story,  434 

4  Mees.  &  W.  295 ;   5  Mees.  & 

W.  698 

4  Mylne  &  Craig,  487   . 

Webs.  Pat.  Cas.  509     ..        • 

Webs.  Pat.  Cas.  393 ;  4  M.  &  G. 

580^  ..•••■ 
Webs.  P.  C.  83 ;  Dan  &  Lloyd,  33 
Webs.  Pat.  Cas.  106 ;    3  Car.  & 

P.  513 ;  Mo.  &  Mai.  283  . 

1  Webs.  Pat.  Cas.  119  ;    1  Russ. 
&  My.  166         .... 

Webs.  P.  C.  418 ;  4  My.  &  Cr.  510 
4  Washington,  220 

2  Brockenbrough's  R.  298     . 

1  Woodbury  &  Minot,  53      . 

2  Washington,  311  .  .  . 
Webs.  P.  C.  152 ;  1  Mo.  &  Rob. 

457  ;  5  Tyr.  393 ;  2  Cr.  M.  &  R. 

476 

2Ves.  Jr.  486  .  .  .  . 
4  Washington,  68  . 


1  Sumner,  319       ...        • 

2  H.  Blaclcst.  470 ;  Dav.  Pat.  Cas. 
172 


4  Mason's  R.  6      . 

Webs.  Pat.  Cas.  224  . 
Peter's  Che.  C.  R.  343 
3  Wheaton,  454     . 


7  Wheaton,  356     . 
7  Wheaton,  453     . 
Peter's  Circ.  C.  R.  215 
2  Washington,  342 


190,  195,  198 

200 

(p.  195) 

11,  95,   163,   (p. 

188) 
216,  253 


81,  131,  (pp.  183, 
188) 

53,  131,  292 
123,  130, 125, 136, 
150,  182,  380 

200 

329,  331, 337, 338, 

344 
39,  53,  102,  359, 

364 
6,  8,  73,  79,  97, 

244 
159 
131, 162,  (p.  185,) 

348,  393,  394 

346,  348,  353 

223 

265 


21,  123,  131,  134, 

136,  244 
123,  244,  387,  394 
62 
9,  158,   161,    (p. 

192,)  378 

319 

30,  131,  134,  189, 

255,  272,   283, 

373 
268 

40,  (p.  35,)  93 


6,  75,   122,    163, 

244,  251 
53,  366 
95,  285 
64,  93,   95,    109, 

133,  271,   272, 

290,  403 
128,  378 
378,  403 
271,  272 
255 


Webs.  P.  C.  97;  Chit.  Prerog.  Cr. 

182 
1  Ves.  &  B.  67      .        '.        '. 


74,  78,  230 
97 


INDEX    OF    CASES     CITED. 


XIU 


Names  of  Cases. 


France  r.  Fringer 

Fulion's  Executors  v.  Myers 

Gralloway  v.  Bleaden  . 

• 
Gibbs  V.  Cole 
Gibson  V.  Brand 

Grant ».  Raymond 

Gray  v.  James    . 


Halliwell  v.  Dearman 
Hall  V.  Boot 
Hall  r.  Jervis 
Harmer  v.  Playne 

Haworth  v.  Hardcastle 

Hayne  v.  Mallby 

Herbert  v.  Adams 

Hesse  V.  Stevenson 

Hill  V.  Thompson 

Hill  r.  Thompson,  (Chancery) 


Hill  V.  Thompson,  (Law) 

Hitchins  v.  Stevens 
Hog"'  V.  Emerson 


Horn  blower  v.  Boulton 
The  Househill  Company  v. 
son   . 

Hovey  v.  Stevens 

Howe  r.  Abbott 
Huddart  v.  Grimshaw 

Hullett  V.  Hague 


Isaacs  r.  Cooper 


Jones  V.  Pearce 
Jupe  r.  Pratt 


Kay  V.  Marshall 

Keplinger  v.  De Young 
The  King  v.  Arkwriglit 


Neil 


AVhere  reported. 


Cro.  Jac.  44 
4  Wash.  220 


Webs.  Pat.  Cas.  521 


3  P.  Will.  255        .        .        .        . 
Webs.  Pat.  Cas.  628 ;  4  Man.  & 

Gr.  179 

6  Peter's  S.  C.  R.  248  . 


Peter's  Circ.  C.  R.  394 


Webs.  Pat.  Cas.  401  . 
Webs.  Pat.  Cas.  100  . 
Webs.  Pat.  Cas.  100  . 
14  Ves.  130;  11  East.  101      . 

Webs.  Pat.  Cas.  480 ;  1  Bing.  N 
C.  182  ;  4  M.  &  Soott,  720 

3  T.  R.  438    . 

4  Mason,  15   . 

3  Bos.  &  P  565    . 
8  Taunt.  375 

Webs.  Pat   Cas.  237 ;    3    Meriv 
626 


Webs.  Pat.  Cas.  239 ;    8  Taunt. 

382 
2  Shower  R.  233    . 
6  Howard,  437 

8  Term  R.  95 

Webs.  Pat.  Cas.  673     . 

1  Woodbury  &  Minot,  290 


2  Story's  R.  190     . 
Webs.  Pat.  Cas.  86  ;    Dav 

Cas.  295     . 
2  Barn.  &  Aid.  370 


Pat. 


4  Washington,  359 


Webs.  Pat.  Cas.  124 
Webs.  Pat.  Cas.  146 


Webs.  Pat.  Cas.  568 ;  1  Mylne  & 
Cr.  373 

10  Wheaton,  358    . 

Webs.  Pat.  Cas.  72 ;  Dav.  Pat. 
Cas.  61 


Where  cited  iu 
this  Work. 


268 
265 


45,  51,  138,  202, 
(p.  300,)  359, 
360 

355 

43,  214,  366 

57,  255,  272,  281, 

306,  394 
78,  92,  144,  222, 

263,  266 


81 

227 

73,79 

97,  155,  (p.  199,) 
327,  329,  339 

132,  (p.  192,)  248, 
383,  391 

199,  350 

189,  260 

189 

49 

73,  78,  134,  141, 
(p.  184,)  322, 
324,  327,  329, 
339,  343,  345, 
346,  355,  383 

241,  242 

268 

122,  123,171.256, 

407 
72,  100,  339 

35,  36,  44,  143, 

254,  369 
27,  325,  330,  337, 

338,  339 
87,  95,  150,  401 
27,  133  (p.  187,) 

85,  .366,  376 
(pp.  307,  308) 


320,  325,  .327 


44,  144,  204,  223 
74,  78,  231,  (p. 
303) 


13,  320,  329,  338 

205 

9,  11,49,99,  134, 
137,  155,  156, 
164,  (pp.  184, 
190,  196,)  366 


XIV 


INDEX    OF    CASES    CITED. 


Names  of  Cases. 


The  King  v.  Cutler  . 
The  King  v.  Fussell  . 
The  King  v.  Lister  . 
The  King  v.  Wheeler 

Kneass  v.  The  Schuyllcill  Bank 


Lamb  v.  Lewis  . 
Langdon  v.  DeGroot  . 
Lewis  V.  Davis   . 
Lewis  V.  Marling 

Liardet  v.  Johnson 
Livingston  v.  Van  Ingin 
Losh  V.  Hague    . 

Lowell  V.  Lews 


MacFarland  v.  Price  . 
Makepeace  v.  Jackson 
Manton  v.  Manton 
Maaton  v.  Parker 
McClurg  V.  Kingsland 

McMurdo  v.  Smith 
Melius  V.  Silsbee 

Minter  v.  Mower 
Minter  r.  Wells  . 
Minter  v.  Williams 
Moody  V.  Fisk    . 

Morgan  v.  Seaward    . 


Neilson  v.  Folhergill 
Neilson  v.  Harford 


Neilson  v.  Thompson 
Nesmith  v.  Calvert 


Where  reported. 


Where  cited  in 
this  Work. 


1  Starkie,  354  .•  • 
Webster's  Subject-Matter,  26 
Ibid.  26 

2  B.  &  Aid.  349     ..        • 


4  Washington's  R.  9 


1  Mason, 

1  Paine's  R.  203    . 

Webs.  P.  C.  488 ;  3  C.  &  P.  502 

10  B.  &  Cress.  22  .        .        • 

Webs.  Pat.  Cas.  53       .         .        • 
9  Johns.  R.  C07     . 
Webs.  Pat.  Cas.  208     . 

1  Mason's  R.  182  . 


1  Stark.  199  . 
4  Taunt.  770 
Dav.  Pat.  Cas.  333 
Dav.  Pat.  Cas   329 

1  Howard,  202       . 

7  T.  R.  518    . 
4  Mason,  108 

6  Adol.  &  Ell.  735 
Webs.  Pat.  Cas.  132 
Webs.  Pat.  Cas.  134 

2  Mason,  115 


Webs.  Pat.  Cas.  170: 
Welsh.  544 


2  M.  & 


Webs.  Pat.  Ca.«.  290  . 

Webs.  P.  C.  191 ;  8  M.  &  W.  806 


Webs.  Pat.  Cas.  275 
1  Woodbury  &  M.  34 


387 

7 

7 

70,  101,  125,  (p. 

183) 
16,19,28,91,130, 

]|3,  139,  244, 

260,  274,  277, 

278 


366 

22,  383 

98,  .357 

138,  (pp.  193, 

205,)  254,  383 
157,  (p.  195) 

7,  53,  87,  95,  329, 
335,  353,  400 

2, 16,  28, 123, 130, 
131,  154,  155, 
222,  280,  367, 
380,  383,  .395, 
402 


(p.  198,)  280,  387 

49 

377 

133,  (p.  188,)  248 

57,  58,  59,  60,  92, 

306,  308,  309 
268,  369 
32,  57,  297,  298, 

300,  306 
(p.  200,)  254 
49,  147,  230,  358 
144,  212 
94,  110,  131,  246, 

387 

11,  73,  138,  156, 

157,  162,  223, 

246,  (p.  300,) 

305,  306,  332, 

337,  346,  347, 

366,  369,  370, 
371 


199,  200, 334, 346, 
249 

9, 74,  78, 123, 130, 
145,  148,  149, 
156,  161,  232, 
(pp.  305,  306,) 
345,  366,  367, 
369,  390,  400 

328,  333, 334, 338, 
346 

189 


INDEX    OF    CASES    CITED. 


.XV 


Names  of  Cases. 


Noble  V.  Wilson 
Norway  v.  Rowe 


Odiorne  v.  The  Aniesbury  Nail 

Factory 

Odiorne  v.  Winkley    . 

Ogle  V.  Ege         .        .        .        . 

Orr  F.  Badger      .         .        .        . 
Orr  V.  Littlefieid 

Orr  V.  Merrill      .        .        .        . 


Park  V.  Little      .... 
Peacock  v.  Peacock    . 
Pennock  v.  Dialogue 

Pennook  v.  Dialogue 

Pennock  &  Sellers  v.  Dialogue  . 
Perry  v.  Parker  .  .  .  . 
Perry  v.  Skinner 

Pettibone  v.  Derringer 
Phila.  and  Trenton  Railroad  Co. 
V.  Thompson    .        .        .        . 

Pierson  v.   The    Eagle    Screw 

Company 
Pitts  V.  WhiUnan 


Poor  V.  Carlton  . 
Prolheroe  r.  May 
Prouty  V.  Draper 
Prouty  p.  Draper 
Prouty  V.  Ruggles 


Reed  r.  Cutter    . 

Rickford  v.  Skewes 
Roberts  r.  Anderson 
Rodgers  v.  Rodgers 
Rogers  v.  Abbott 
Rundell  v.  Murray 
Russell  V.  Barnsley 
Russell  V.  Cowley 
Russell  V.  Cowley 


Ryan  v.  Goodwin 


Saunders  v.  Smith 
Savory  v.  Price 
Sawin  v.  Guild  . 


Where  reported. 


1  Paige,  164 
19  Ves.  146 


2  Mason,  28  . 

2  Gallison,  51  .        .        . 

4  Washington,  584 

10  Law  Reporter,  Feb.  1845 
1  Woodbury  &  M.  13   . 

1  Woodbury  &  M.  376 


3  Washington,  196 
19  Ves.  49     . 
2  Peters,  1      . 


Where  eited  in 
this  Work. 


4  Washington,  538 


1  Peters,  1     .        .        .         . 

1  Woodbury  &  M.  280 

Law  Journ.  p.  127 ;  Cited  Godson 

on  Pat 

4  Washington's  R.  218 

14  Peters,  448        ..        . 


3  Story's  R.  402     .  .        .    60, 251,  306,  308 

2  Story's  R.  609     .  .    93,  122,  150,  190, 

191,  260,    266, 
269 

3  Sumner,  70  ....    356 
Webs.  P.  C.  415;  5M.  &  W.  675    197 
1  Story's  R.  568     .  .93,  95 
1  Story's  R.  568    .                 .         .150 
16  Peters,  336  .95,  150 


329 
355 


113 

95,  133,  221,  312 

319,  322, 327,  329, 
337 

329,  338,  339,  342 

320,  325, 327, 329, 
338,  342,  355 

340,342 


88,  93,  260 

355 

296, 297,  300,  302, 

306 
30,  31,  40,  48,  57, 

402 
281 
323 

(p.  206) 
21 

278, 283, 284,  358, 
361 


1  Story's  R.  590     . 

Webs.  Pat.  Cas.  211 

2  Johns.  Ch.  R.  202 
1  Paige,  426  . 
4  Washington,  514 
Jacobs,  311     . 
Webs.  Pat.  Cas.  472 
1  Cromn.  Mees.  &  Rose.  864 
Webs.  Pat.  Cas.  459     . 


3  Sumner's  R.  518 


3  Mylne  &  Craig,  711 
R.  &  M.  1     . 
1  Gallison,  485 


33,  40,  43,    114, 

288,  312 
327 

329 
322 

339,  341 

394 

73,  79,  230,  244, 

347,  376,    387, 

394 
2, 24, 56, 104, 126, 

134,  304,    306, 

366 


352 

137,  159,  (p.  189) 

189,  204,  207 


XVI 


INDEX    OF    CASES    CITED. 


Names  of  Cases. 


Shaw  V.  Cooper 


Siinpson  V.  Wilson 
Sinyibe  v.  Smythe 
Stearns  v.  Barrett 
Stone  V.  Sprague 
Sturz  V.  DeLaRue 


Sullivan  v.  Redfield 


Taylor  n.  Hare    . 
Tenant's  Case    . 
Thompson  v.  Hill 
Treadwell  v.  Bladen 
Turner  v.  Winter 


Turner  v.  Winter 

Tyler  v.  Tuel       .        .        .        . 

Oxford  and  Cambridge  Univer- 
sity V.  Richardson    . 

Walton  V.  Bateman    . 
Walton  V.  Potter 


Ward  V.  Van  Bockelen 
Washburn  v.  Gould    . 

Washburn  v.  Gould 
Watson  V.  Bladen 
Webster  v.  Lowther 
Westhead  v.  Keene 
Whitney  v.  Emmett 
Whittemore  v.  Cutter 


Wilson  V.  Rousseau 


Wilson  V.  Tindal 
Winans  v.    Boston   and    Provi- 
dence Railroad 
Wood  V.  Turner 
Wood  V.  Undei'hiU 
Wood  V.  Ziinmer 

Woodcocks.  Parker  . 
Woodcock  V.  Parker  . 
Woodwrorth  v.  Hall    . 


Woodworth  r.  Sherman 


AVhere  reported. 


7  Peters.  S.  C.  R.  313 


4  Howard,  709  .  .  . 
1  Swanst.  254  .  .  •  • 
1  Mason,  153  .  .  .  • 
1  Story's  R.  270  .  .  •  • 
Webs.  Pat.  Cas.  585 ;  5  Russ.  Ch. 
R.  322 

Paine's  C.  C.  R.  441     . 


1  N.  R.  260    . 
Dav.  Pat.  Cas.  429 

3  Meriv.  622 

4  Washington,  707 
1  T.  R.  602    . 


1  T.  R.  602  . 
6  Cranch,  324 


6  Ves.  689 


Webs.  Pat.  Cas.  622  . 
Webs.  Pat.  Cas.  592 ;  3  M.  &  G. 
411 


Where  cited  in 
this  Work. 


1  Paige,  100  . 

3  Story's  R.  122     . 

3  Story's  R.  156     . 

4  Washington,  583 
Cited  Godson  on  Pat.  232 
1  Beav.  309    . 

Baldw.  303    . 

1  Gallison's  R.  429,  478 


4  Howard,  646 


Webs.  Pat.  Cas.  730 

2  Story's  R.  412     . 
Webs.  Pat.  Cas.  175 
5  Howard,  1  . 
1  Holt,  58       . 


1  Gallison's  R.  438 
1  Gallison's  R.  438 
1  Woodbury  &  M.  248,  389 

3  Story's  R.  171     . 


57,  62,  296,  297, 
298,  299,  300, 
302,  306 

210 

355 

30,  358 

76,  144 

81  a.  139, 158,  (p. 

184,)  322 
159 


199 

48 

329 

32,  219,  378 

29,  134,  137,  139, 

157,   (p.    183,) 

280 
(p.  137,)  364 
259 


329 


157 

40,81a.  124,202, 

220,  225,    235, 

239,    (p.    305,) 

376 
329 
39,  48,  51,    122, 

123,  163 
325 
204 
223 
320 
394 

3,  23,  75,  93,  95, 
96,  122,  133, 
140,  142,  203, 
219,  250,  260, 
272,  274,  280, 
380,  402 

117,  (p.  Ill,) 
184,  193,  261, 
318 

339,  356 

4,  131,  387 
157 

160 

(p.     195,) 
304,  315 

3 

43,  133,  140 

177,  178, 183, 192, 
206,  325,  327, 
337,  349,  403 

118,  193,  329,  358 


300, 


INDEX    OF    CASES    CITED. 


XVU 


Names  of  Cases. 

Where  reported. 

Where  cited  in 
this  Work. 

Wood  worth  V.  Stone  . 

Woodworth  v.  WiJson 

Wright's  Patent  . 

Wyeth  p.  Stone  .... 

3  Story's  R.  749     . 

4  Howard,  712       . 
Webs.  Pat.  Cas.  736     . 
1  Story's  R.  270     . 

181, 183, 192, 193, 
320,  321 

196,  197,  260,  319 

36 

2,  25,  54,  57,  76, 
111,  126,  130, 
131,  133,  145, 
169,  191,  194, 
221,  293,  295, 
304,  306,  310, 
317,  351,  352, 
394 

ERRATA, 

p.  105,  note  1  to  ^  117,  for  1  Howard,  read  4  Howard. 

p.  162,  note  2  to  §  155,  for  Harman  v.  Playne,  read  Havmer  v.  Playne. 

p.  168,  note  2  to  §  159, /or  Savoy  v.  Price,  read  Savory  v.  Price. 

p.  173,  note  2  to  ^  163,  after  Brundon  v.  Hawkes,  insert  4  B.  &  Aid.  540- 

p.  190,  note  A,  for  Harman  v.  Playne,  read  Harmer  v.  Playne. 

p.  232,  note  2,  for  Wood  worth  v.  Sherman,  2  Story's  R.  171,  read  3  Story's  R.  171, 

p.  XV,  Index  of  Cases,  for  Rickford  v.  Skewes,  read  Bickford,  &c. 


PRELIMINARY  OBSERYATIONS. 


Writers  on  the  Law  of  Patents  for  useful  inventions 
have  often  introduced  their  discussions  of  this  branch  of 
the  law,  by  tracing  the  history  of  monopolies  in  the 
Law  of  England.     This  example  has  not  been  followed 
in  the  present  work,  because  it  is  believed  that  it  tends 
to  encourage  incorrect  conceptions  of  the  legal  nature  of 
a  patent  privilege.     A  patent  for  a  useful  invention  is 
not,  under  our  law,  or  the  law  of  England,  a  grant  of  a 
monopoly,  in  the  sense  of  the  old  common  law.     It  is 
the  grant  by  the  government,  to  the  author  of  a  new 
and  useful  invention,  of  the  exclusive  right,  for  a  term  of 
years,  of  practising  that  invention.     The   consideration, 
for  which  this  grant  is  made  by  the  public,  is,  the  benefit 
to  society  resulting  from  the  invention;  which  benefit 
flows  from  the  inventor  to  the  public  in  two  forms ;  first, 
by  the  immediate  practice  of  the  invention,  under  the 
patent ;  and  secondly,  by  the  practice  of  the  invention,  or 
the  opportunity  to  practise  it,  which  becomes  the  prop- 
erty of  the  public,  on  the  expiration  of  the  patent.     As 
the  exercise  of  the  invention  is  wholly  within  the  control 
of  him  who  has  made  it,  who  may  confine  his   secret 
entirely  within  his  own  breast,  it  is  apparent  that  his 


XX 


PRELIMINARY    OBSERVATIONS. 


consent  to  make  it  known  and  available  to  others,  and 
finally  to  surrender  it  to  the  public,  becomes  a  valuable 
consideration,  for  which,  upon  the  principles  of  natural 
justice,  he  is  entitled  to  receive  compensation,  in  some 
form,  from  the  public  to  whom  that  consideration  passes. 
Inventors,  in  this  respect,  stand  upon  the  same  broad 
ground   with   authors.      Both  of  these  classes  of  per- 
sons have  created  something,  intellectual  in  its  nature, 
the  knowledge  of  which  it  is  desirable  to  others  to  pos- 
sess.    Both  of  them  have,  at  first,  the  complete  right  of 
disposition  over  that  which  they  have  created  ;  and  when 
they  part  with  the  exclusive  possession  of  this  know- 
ledge and  confer  upon  others  the  opportunity  of  reaping 
the  benefits  which  it  confers,  they  manifestly  consent  to 
something   for  which  they  are   entitled   to  receive   an 
equivalent. 

Whether  we  regard  the  knowledge,  remaining  for  the 
present  in  the  exclusive  control  of  him  whose  intellectual 
production  it  is,  as  property,  or  as  a  possession  of  ideas, 
to  which  some  other  term  might  be  more  appropriate,  it 
is  still  a  possession,  of  which  the  owner  cannot,  by  any 
rule  of  natural  justice,  be  deprived,  without  his  consent. 
In  this  view,  it  may,  as  it  seems  to  me,  justly  be  termed 
property ;  for  although  in  political  economy,  and  in  com- 
mon speech,  material  possessions,  or  the  rights  growing 
out  of  them,  are  the  objects  generally  included  under 
that  term,  yet  no  one  will  question  that  ideas  constitute, 
in  ethical  contemplation,  a  portion  of  a  man's  possessions 
entirely  under  his  own  control ;  and  in  the  case  of  use^ 
ful  inventions,  or  of  written  thought,  there  is  to  be  added 
to  the  power  of  control  the  further  economical  fact,  that 
other  men  will  part  with  valuable  possessions  of  all  kinds, 
in  order  to  obtain  that  invention  or  writing  in  exchange. 


PRELIMINARY    OBSERVATIONS.  XXI 


For  these  and  for  other  reasons,  which  I  have  endeavored 
more  fully  to  develop  elsewhere,  in  relation  to  the  rights 
of  authors,  I  do  not  hesitate  to  affirm,  that  in  natural  jus- 
tice —  the  ethics  of  jurisprudence,  by  w^hich  civil  rights 
are  to  be  examined,  apart  from  all  positive  law,  but  on 
which  positive  law  is  usually  founded  —  the  intellectual 
conception  of  an  inventor,  or  a  writer,  constitutes  a  val- 
uable possession,  capable  of  being  appreciated  as  a  con- 
sideration, when  it  passes,  by  his  voluntary  grant,  into 
the  possession  of  another.  If,  by  the  same  voluntary 
grant,  this  possession  is  bestowed  upon  the  public,  the 
logical  justice  of  compensation,  in  some  form,  will  appear, 
at  once,  by  supposing  the  benefit  to  have  been  conferred 
exclusively  upon  any  one  of  the  mass  of  individuals 
who  form  in  the  aggregate  the  moral  entity  termed  the 
public. 

Let  us  suppose  that  A.,  by  the  exertion  of  his  inven- 
tive faculties,  has  ascertained,  that  by  placing  matter  in 
certain  positions  to  be  operated  upon  by  the  forces  of 
nature,  a  result  will  be  produced,  in  the  shape  of  an 
instrument,  wholly  unknown  before,  and  capable  of  being 
usefully  applied  to  the  wants  of  mankind.  Let  us  sup- 
pose that  B.,  seeing  the  result,  but  wholly  ignorant  of 
the  process  by  which  it  may  be  attained,  desires  to  pos- 
sess that  instrument.  Common  gratitude  would  prompt 
him  to  return  something  valuable  for  it,  if  it  were  given 
to  him ;  common  policy  would  lead  him  to  offer  some- 
thing for  it,  if  it  were  not  freely  given ;  and  common 
justice  requires  that  he  should  not  take  it,  without  an 
equivalent.  How  does  it  alter  the  case,  if,  instead  of  a 
single  specimen  of  the  instrument,  we  suppose  A.  to  have 
retained  in  his  recollection  the  process  by  which  copies  of 
that  instrument  may  be  indefinitely  multiplied,  and  that 


ixii  PRELIMINARY    OBSERVATIONS. 

it  is  the  secret  process  of  making  the  thing,  the  intel- 
lectual conception  and  knowledge,  which  B.  desires  to 
possess  ?  If  he  obtains  it,  he  can  make  the  thing  for  his 
own  use,  or  for  the  use  of  others,  and  by  so  doing  can 
acquire  valuable  possessions  in  exchange ;  all  of  which 
A.  could  do  exclusively,  by  retaining  his  own  secret. 
But  if  he  imparts  that  secret  to  B.,  he  is  surely  entitled 
to  receive  for  it  some  reward  or  remuneration. 

This  secret  the  inventor  undertakes  to  impart  to  the 
public,  when  he  enters  into  the  compact,  which  the  grant 
of  a  patent  privilege  embraces.  In  that  compact,  he 
promises,  after  the  lapse  of  a  certain  period,  to  surrender 
to  the  public  completely  the  right  of  practising  his  inven- 
tion ;  and  as  a  guaranty  against  his  concealment  of  the 
process  by  which  it  is  to  be  practised,  and  to  prevent  the 
loss  of  this  knowledge,  he  is  required  to  deposit  in  the 
archives  of  the  government  a  full  and  exact  description 
in  writing  of  the  whole  process,  so  framed,  that  others 
can  practise  the  invention  from  the  description  itself. 
The  public,  on  the  other  hand,  through  the  agency  of  the 
government,  in  consideration  of  this  undertaking  of  the 
inventor,  grants  and  secures  to  him  the  exclusive  right 
of  practising  his  invention  for  a  term  of  years. 

In  all  this,  a  patent  right,  under  the  modern  law  of 
England  and  America,  differs  essentially  from  one  of  the 
old  English  Monopolies.  In  those  grants  of  the  crown, 
the  subject-matter  of  the  exclusive  privilege  was  quite 
as  often  a  commodity  of  which  the  public  were  and  long 
had  been  in  possession,  as  it  was  any  thing  invented, 
discovered,  or  even  imported  by  the  patentee. 

Nothing  passed,  in  such  cases,  from  the  patentee  to 
the  public,  in  the  nature  of  a  consideration  for  the  enor- 
mous privilege  conferred  upon  him ;  but  the  public  were 


PRELIMINARY    OBSERVATIONS.  XXlll 

robbed  of  something  already  belonging  to  them,  viz.,  the 
right  to  make  or  deal  in  a  particular  commodity,  for  the 
benefit  of  the  favored  grantee  of  the  crown.  So  broad 
is  the  distinction  between  these  cases  and  that  of  the 
meritorious  inventor  or  importer  of  something  new  and 
useful,  that  when  Parliament,  in  the  21  James  I.,  taking 
encouragement  from  the  courts  of  law,  prohibited  the 
granting  of  exclusive  privileges  in  trade,  by  the  Statute 
of  Monopolies,  they  introduced  an  exception  in  favor  of 
"letters-patent  and  grants  of  privilege  for  the  term  of 
one-and-twenty  years  or  under,  heretofore  made,  of  the  sole 
working  or  making  of  any  manner  of  new  manufacture, 
within  this  realm,  to  the  first  and  true  inventor  or  inven- 
tors of  such  manufactures,  which  others  at  the  time  of 
the  making  of  such  letters-patent  and  grants,  did  not 
use,  so  they  be  not  contrary  to  law,  nor  mischievous  to 
the  state,  by  raising  the  prices  of  commodities  at  home, 
or  hurt  to  trade,  or  generally  inconvenient,"  &c. 

Upon  this  exception,  the  law  of  England,  concerning 
Patents  for  Useful  Inventions,  stands  to  this  day. 

The  modern  doctrine,  in  England,  and  undoubtedly 
the  doctrine  of  our  law,  is,  that  in  the  grant  of  a  patent 
right,  a  contract,  or,  as  it  has  been  said,  a  bargain,  takes 
place,  between  the  public  and  the  patentee.  As  far  as 
the  old  cases  on  the  subject  of  monopolies  furnish,  like 
other  cases  of  grants  by  the  crown,  rules  and  analogies 
for  the  construction  of  this  species  of  grant,  so  far  the 
history  of  monopolies  has  a  bearing  upon  this  branch  of 
jurisprudence.  But  it  should  always  be  remembered 
that  in  the  grant  of  a  patent  privilege,  as  now  under- 
stood, a  contract  takes  place  between  the  public  and  the 
patentee,  to  be  supported  upon  the  ground  of  mutual 
considerations,  and  to  be  construed,  in  aU  its  essential 


Xxiv  PRELIMINARY    OBSERVATIONS. 

features  of  a  bargain,  like  other  contracts  to  which  there 
are  two  parties,  each  having  rights  and  interests  involved 
in  its  stipulations. 

It  is  necessary  also  to  have  clear  and  correct  no- 
tions of  the  true  scope  of  a  patent  right,  because  its 
nature  and  character  will  show  whether  there  is  any  close 
analogy  between  such  privileges  and  those  to  which  the 
term  monopoly  is  correctly  applied.  In  this  connection, 
therefore,  I  shall  attempt  a  brief  general  description  of 
the  subject  of  protection,  in  patent  rights ;  without,  how- 
ever, designing  to  lay  down  definitions,  or  to  draw  exact 
lines,  within,  or  without  which  controverted  cases  may 
fall ;  but  solely  with  the  purpose  of  stating  certain  gen- 
eral principles  and  truths,  the  application  and  develop- 
ment of  which  may  be  found  to  assist,  in  particular 
cases,  the  solution  of  the  question,  whether  a  particular 
invention  or  discovery  is  by  law  a  patentable  subject. 

In  this  enquiry  it  is  necessary  to  commence  with  the 
process  of  exclusion ;  for  although,  in  their  widest  accepta- 
tion, the  terms  invention  and  discover}'-  include  the  whole 
vast  variety  of  objects  on  which  the  human  intellect  may 
be  exercised,  so  that  in  poetry,  in  painting,  in  music,  in 
astronomy,  in  metaphysics,  and  in  every  department  of 
human  thought,  men  constantly  invent  or  discover,  in 
the  highest  and  the  strictest  sense,  their  inventions  and 
discoveries  in  these  departments  are  not  the  subjects  of 
the  patent  law.  Another  branch  of  jurisprudence,  of  a 
kindred  nature,  aims  at  the  protection  and  establishment 
of  property  in  literary  productions,  and  in  some  of  those 
which  Ml  within  the  province  of  the  fine  arts.  The 
patent  law  relates  to  a  great  and  comprehensive  class  of 
discoveries  and  inventions  of  some  new  and  useful  effect 
or  result  in  matter,  not  referable  to  the  department  of  the 


PRELIMINARY    OBSERVATIONS.  XXV 

fine  arts.  The  matter  of  which  our  globe  is  composed, 
is  the  material,  upon  which  the  creative  and  inventive 
faculties  of  man  are  exercised,  in  the  production  of  what- 
ever ministers  to  his  convenience  or  his  wants.  Over  the 
existence  of  matter  itself,  he  has  no  control.  He  can 
neither  create  nor  destroy  a  single  atom  of  it;  he  can 
only  change  its  form,  by  placing  its  particles  in  new  rela- 
tions, which  may  cause  it  to  appear  as  a  solid,  a  fluid,  or 
a  gas.  But  under  whatever  form  it  exists,  the  same 
matter,  in  quantity,  that  was  originally  created,  exists 
now,  and,  so  far  as  we  now  know,  will  forever  continue  to 
exist. 

The  direct  control  of  man  over  matter  consists,  there- 
fore, in  placing  its  particles  in  new  relations.  This  is  all 
that  is  actually  done,  or  that  can  be  done  —  namely,  to 
cause  the  particles  of  matter  existing,  in  the  universe,  to 
thange  their  former  places,  by  moving  them,  by  muscu- 
lar power,  or  some  other  force.  But  as  soon  as  they  are 
brought  into  new  relations,  it  is  at  once  perceived  that 
there  are  vast  latent  forces  in  nature,  which  come  to  the 
aid  of  man,  and  enable  him  to  produce  effects  and  results 
of  a  wholly  new  character,  far  beyond  the  mere  fact  of 
placing  the  particles  in  new  positions.  He  moves  certain 
particles  of  matter  into  a  new  juxtaposition,  and  the 
chemical  agencies  and  affinities  called  into  action  by  this 
new  contact,  produce  a  substance  possessed  of  new  prop- 
erties and  powers,  to  which  has  been  given  the  name  of 
gunpowder.  He  takes  a  stalk  of  flax  from  the  ground, 
splits  it  into  a  great  number  of  filaments,  twists  them 
together,  and  laying  numbers  of  the  threads  thus  formed 
across  each  other,  forms  a  cloth,  which  is  held  together 
by  the  tenacity  or  force  of  cohesion  in  the  particles, 
which  nature  brings  to  his  aid.     He  moves  into  new  posi- 


Xxn  PRELIMINARY    OBSERVATIONS. 

tions  and  relations  certain  particles  of  wood  and  iron,  in 
various  forms,  and  produces  a  complicated  machine,  by 
which  he  is  able  to  accomplish  a  certain  purpose,  only 
because  the  properties  of  cohesion  and  the  force  of  grav- 
itation cause  it  to  adhere  together  and  enable  the  different 
parts  to  operate  upon  each  other  and  to  transmit  the 
forces  applied  to  them,  according  to  the  laws  of  motion. 
It  is  evident,  therefore,  that  the  whole  of  the  act  of  inven- 
tion, in  the  department  of  useful  arts,  embraces  more 
than  the  new  arrangement  of  particles  of  matter  in  new 
relations.  The  purpose  of  such  new  arrangements  is  to 
produce  some  new  effect  or  result,  by  calling  into  activity 
some  latent  law,  or  force,  or  property,  by  means  of  which, 
in  a  new  application,  the  new  effect  or  result  may  be 
accomplished.  In  every  form  in  which  matter  is  used,  in 
every  production  of  the  ingenuity  of  man,  he  relies  upon 
the  laws  of  nature  and  the  properties  of  matter,  and* 
seeks  for  new  effects  and  results  through  their  agency 
and  aid.  Merely  inert  matter  alone  is  not  the  sole  mate- 
rial with  which  he  works.  Nature  supplies  powers, 
and  forces,  and  active  properties,  as  well  as  the  particles 
of  matter,  and  these  powers,  forces,  and  properties  are 
constantly  the  subjects  of  study,  inquiry,  and  experiment, 
with  a  view  to  the  production  of  some  new  effect  or 
result  in  matter. 

Any  definition  or  description,  therefore,  of  the  act  of 
invention,  which  excludes  the  application  of  the  natural 
law,  or  power,  or  property  of  matter,  on  which  the  inventor 
has  relied  for  the  production  of  a  new  effect,  and  the 
object  of  such  application,  and  confines  it  to  the  precise 
arrangement  of  the  particles  of  matter  which  he  may 
have  brought  together,  must  be  erroneous.  Let  us  sup- 
pose the  invention,  for  the  first  time,  of  a  steam-engine, 


PRELIMINARY    OBSERVATIONS.  XXVU 

in  one  of  its  simplest  forms,  the  use  of  steam  as  a  mo- 
tive power  having  never  been  discovered  before.  Besides 
all  the  other  powers  of  nature,  of  which  the  inventor 
avails  himself  almost  without  thought,  by  which  the  dif- 
ferent parts  of  his  machine  are  held  together  and  enabled 
to  transmit  the  forces  applied  to  them,  he  has  discovered 
and  purposely  applied  the  expansive  power  of  steam,  as 
the  means  of  generating  a  force  that  sets  his  machine  in 
motion.  All  that  he  actually  does  with  the  matter  in 
which  this  expansive  power  resides,  is  to  turn  certain 
particles  of  matter  into  certain  particles  of  vapor,  and  to 
bring  that  vapor  in  contact  with  an  obstructing  mass  of 
matter,  to  which  it  communicates  motion,  by  pushing  it 
from  its  place.  But  the  invention  consists  in  observing 
and  applying  this  natural  power,  the  expansive  force  of 
steam,  to  produce  the  effect  or  result  of  moving  the 
obstructing  mass  of  matter  from  the  place  where  it  was 
at  rest.  It  would  be  singularly  incorrect  and  illogical  to 
say,  that  a  man  who  should  take  a  certain  other  quantity 
of  matter,  and  convert  it  into  a  certain  other  quantity  of 
steam,  and  bring  that  steam  in  contact  with  a  certain 
other  obstructing  mass  of  wood  or  iron,  for  the  purpose 
of  moving  it,  would  not  produce  the  same  effect  by  the 
same  means,  as  the  person  who  first  discovered  and 
applied  the  expansive  power  of  steam  to  move  a  piece  of 
wood  or  iron. 

Again,  let  us  take  the  case  of  an  improvement  in  the 
art  of  manufacturing  iron,  which  consisted  in  the  discovery 
that  a  blast  of  air  introduced  into  a  smelting  furnace  in 
a  heated  state,  produces  an  entirely  different  effect  on 
the  iron  manufactured  from  the  ore,  to  that  produced  by 
blowing  the  furnace  with  cold  air.  What  the  inventor 
did,  in  this  case,  was,  to  introduce  a  certain  amount  of 


Xxviii  PRELIMINARY    OBSERVATIONS. 

caloric  into  the  blast  of  air,  on  its  passage  from  the  blow- 
ing apparatus  into  the  furnace,  thereby  creating  a  blast 
of  a  new  character,  productive  of  a  new  effect;  and  any 
other  person  who  should  introduce  caloric  into  a  certain 
other  quantity  of  atmospheric  air,  and  use  that  air,  so 
heated,  to  blow  a  smelting  furnace,  would  do  precisely 
the  same  thing.     The  invention  consisted  in  the  discov- 
ery and  application  of  the  law  or  fact,  that  heated  air 
produces  a  difterent  effect  from  cold  air,  in  a  particular 
art,  and  in  thereby  accomplishing  a  new  result  in  that  art. 
In  these  and  in  all  other  cases,  there  is  a  particular 
arrangement  of  matter,  which  consists  in  the  new  rela- 
tions and  positions  in  which  its  particles  are  placed.    But 
beyond  this,  there  is  also  the  effect  or  result,  produced 
by  the  action  of  the  forces  of  nature,  which  are  for  the 
first  time  developed  and  applied,  by  the  new  arrangement 
of  the  matter  in  which  they  reside.     The  use  and  adapta- 
tion of  these  forces  is  the  direct  purpose  of  the  inventor ; 
it  is  as  new  as  the  novel  arrangement  of  the  particles  of 
matter ;  and  it  is  far  more  important.     In  fact,  it  is  the 
essence  and  substance  of  the  invention :  for  if  no  new 
effect  or  result,  through  the  operation  of  the  forces  of 
nature,  followed  the  act  of  placing  portions  of  matter 
in  new  positions,  invention  would  consist  solely  in  new 
arrangements  of  particles  of  inert  matter,  productive  of 
no  new  consequences  beyond  the  fact  of  such  new  posi- 
tion of  the  particles. 

However  inadequate,  therefore,  the  term  may  be,  to 
express  what  it  is  used  to  convey,  it  is  obvious  that  there 
is  a  characteristic,  an  essence,  or  purpose  of  every  inven- 
tion, which,  in  our  law,  has  been  termed  by  jurists  its 
principle ;  and  that  this  can  ordinarily  be  perceived  and 
apprehended  by  the  mind,  in  cases  where  the  purpose 


PRELIMINARY    OBSERVATIONS.  .  XXIX 

aii^  object  of  the  invention  does  not  begin  and  end  in 
form  alone,  only  by  observing  the  powers  or  qualities  of 
matter,  or  the  laws  of  physics,  developed  and  put  in 
action  by  that  arrangement  of  matter,  and  the  effect  or 
result  produced  by  their  application.  Even  in  cases 
where  the  subject  of  the  invention  consists  in  form  alone, 
the  principle  or  characteristic  of  the  invention  is  the 
result  produced  by  the  aid  and  through  the  action  of  the 
qualities  of  matter.  As,  for  instance,  to  take  the  sim- 
plest case,  if  I  make  a  round  ball,  for  the  first  time,  of 
clay,  or  stone,  or  wood,  I  do  so  by  putting  the  particles 
of  matter  in  those  relations  and  positions,  in  which, 
through  the  attraction  of  cohesion  which  holds  them 
together,  the  result  of  spherical  form  will  be  produced ; 
and  this  result,  so  produced,  is  the  essence  or  principle  of 
the  invention.  In  the  case  of  inventions  which  are  inde- 
pendent of  form,  we  arrive  at  the  principle  of  the  inven- 
tion in  the  same  way.  As,  if  I,  for  the  first  time,  direct 
a  column  of  steam  against  a  piece  of  wood  or  iron,  for 
the  purpose  of  producing  motion,  the  characteristic  or 
principle  of  my  invention  consists  in  the  use  and  appli- 
cation of  the  expansive  force  of  steam  and  the  effect  of 
motion  thereby  produced  ;  and  these  remain  logically  the 
same,  whether  the  form  and  size  of  the  wood  or  iron,  and 
the  form  or  size  of  the  column  of  steam  are  the  same  as 
mine,  or  different. 

It  is  apparent,  then,  that  the  mere  novel  aiTangement 
of  matter,  irrespective  of  the  purpose  and  effect  accom-^ 
plished  by  such  arrangement  through  the  agency  of 
natural  forces  or  laws,  or  the  properties  of  matter,  is  not 
the  whole  of  invention ;  but  that  the  purpose,  effect,  or 
result,  and  the  application  of  the  law,  force,  or  property 
by  means  of  which  it  is  produced,  are  embraced  in  the 


XXX  PRELIMINARY    OBSERVATIONS. 

complex  idea  of  invention,  and  give  the  subject  of  Ithe 
invention  its  peculiar  character  or  essence.  And  if  this 
is  true  it  is  easy  —  and  as  correct  as  it  is  easy  —  to 
advance  to  the  position  that  the  discovery  and  applica- 
tion of  a  new  force  or  law  of  nature,  as  a  means  of  pro- 
ducing an  effect  or  result  in  matter  never  before  pro- 
duced, may  in  some  cases  be  the  subject  of  a  patentable 
invention.  When  it  has  been  laid  down  that  a  "  prin- 
ciple "  —  meaning  by  this  use  of  the  term,  a  law  of  na- 
ture, or  a  general  property  of  matter,  or  rule  of  abstract 
science  —  cannot  be  the  subject  of  a  patent,  the  doctrine, 
rightly  understood,  asserts  only  that  a  law,  property,  or 
rule  cannot,  in  the  abstract,  be  appropriated  by  any  man ; 
but  if  an  inventor  or  discoverer  for  the  first  time  pro- 
duces an  effect  or  result,  practically,  by  the  application 
of  a  law,  he  may  so  far  appropriate  that  law,  as  to  be 
entitled  to  say,  that  whoever  applies  the  same  law  to  pro- 
duce the  same  effect  or  result,  however  the  means,  appa- 
ratus, forms,  or  arrangements  of  matter  may  be  varied, 
practises  or  makes  use  of  his  invention,  unless  the  varia- 
tion of  means,  apparatus,  method,  form,  or  arrangement 
of  matter,  introduces  some  new  law,  or  creates  some  new 
characteristic,  which  produces  or  constitutes  a  substan- 
tially different  result.  For,  in  all  such  cases,  the  pecu- 
liarity of  the  invention  consists  in  the  effect  produced 
by  the  application  of  the  natural  law,  as  an  agent ;  and 
this  effect  is  not  changed,  by  the  use  of  different  vehicles 
for  the  action  of  the  agent,  provided  there  is  still  the 
same  agent,  operating  substantially  in  the  same  way,  to 
produce  substantially  the  same  effect  or  result. 

This  may  be  illustrated  by  several  inventions  or  dis- 
coveries, for  which  patents  have  been  granted  and  which 
have  been  the  subjects  of  litigation.     One  of  the  most 


PRELIMINARY     OBSERVATIONS.  XXXI 

striking  of  these  cases  is  that  ah-eady  mentioned,  of  the 
application  of  a  hot  air  blast  to  the  production  of  a  par- 
ticular eflect  in  the  manufacture  of  iron.  It  is  very  easy 
to  say,  in  general  terms,  that  no  man  can  appropriate  to 
himself  the  use  of  caloric,  which  is  a  substance,  or  ele- 
ment, or  force  in  nature,  bountifully  supplied,  as  the  com- 
mon property  of  mankind.  But  if  any  man  has  discov- 
ered that  the  use  of  caloric  in  a  particular  manner,  never 
before  observed,  will,  as  a  universal  fact,  produce  a  par- 
ticular effect,  of  a  new  character,  upon  matter,  what  rea- 
son can  exist  why  he  should  not  appropriate  to  himself 
the  production  of  that  effect  by  the  use  of  that  particular 
agent?  His  appropriation,  in  such  a  case,  would  em- 
brace strictly  what  he  has  invented.  It  may  be  more  or 
less  meritorious ;  it  may  have  been  more  or  less  difficult  or 
easy  of  discovery ;  it  is  still  his  invention,  and  any  one  else 
who  does  the  same  thing  after  the  inventor,  however  he 
may  vary  the  particular  means  or  apparatus,  practises 
that  invention  which  the  inventor  was  the  first  to  discover 
and  announce  to  the  world.  If  the  patent  law  were  to 
say,  in  this  case,  that  the  invention  or  discovery  could 
not  be  appropriated  by  him  who  had  made  it,  because 
caloric  is  the  common  property  of  all  men,  it  would  be 
obliged,  in  consistency,  to  say  that  a  certain  arrangement 
of  wood  and  iron,  constituting  a  new  machine,  could  not 
be  appropriated  by  the  inventor,  because  cohesion,  gravi- 
tation, and  the  laws  of  motion,  which  are  all  applied  by 
the  inventor  to  the  accomplishing  a  certain  effect,  are 
the  common  property  of  every  man.  But  the  patent  law 
does  not  come  to  such  determinations.  It  proceeds  upon 
the  truth,  that  while  the  properties  of  matter,  the  forces, 
or  elements  of  nature  are  common  property,  any  man 
who  applies  them  to  the  production  of  a  new  and  useful 


XXXii  PRELIMINARY    OBSERVATIONS. 

effect  in  matter,  may  rightfully  claim  to  have  been  the 
inventor  of  that  application  to  the  purpose  of  that  effect. 
The  effect  itself  is  what  is  commonly  regarded  as  the 
patentable  subject;  but  as  that  particular  effect  must 
always  be  produced  by  the  application  of  the  same  prop- 
erties of  matter,  or  the  same  forces  or  elements  in  nature, 
it  is  correct  to  say  that  the  appropriation  rightfully 
includes  their  application  to  the  production  of  the  effect, 
and  that  to  this  extent  they  may  be  appropriated. 

Inventions  which  consist  in  the  application  of  the 
known  qualities  of  substances,  extend  the  appropriation 
of  the  inventor  to  those  qualities  in  the  same  manner  and 
in  the  same  sense.  For  instance,  in  the  case  of  Walton's 
improvement  in  the  manufacture  of  cards  for  carding 
wool,  &c.,  which  consisted  in  giving  elasticity  and  flexi- 
bility to  the  backs  of  the  cards,  by  making  the  sheet  on 
the  back,  in  which  the  teeth  are  inserted,  of  India  rubber, 
instead  of  leather.  The  qualities  of  elasticity  and  flexi- 
bility in  India  rubber  were  common  property ;  but  this 
did  not  prevent  the  inventor  from  sustaining  a  patent, 
which  was  held  to  cover  the  general  ground  of  giving 
to  the  backs  of  cards  elasticity  and  flexibility  derived 
from  India  rubber,  by  whatever  form  of  application  of 
the  India  rubber  the  effect  might  be  produced.  ^ 

In  the  same  manner,  inventions  which  consist  in  the 
application  of  a  well  known  law  of  physical  science, 
involve  and  admit  of  the  appropriation  of  that  law  in 
its  application  to  the  production  of  the  particular  effect, 
however  the  machinery  or  apparatus  may  be  varied. 
There  is  a  known  law  of  physics,  that  the  evaporation  of 
a  liquid  is  promoted  by  a  current  of  air,  and  this  law  is 

^  See  post,  p.  305. 


PRELIMINARY    OBSERVATIONS.  XXXllI 


common  property.  An  invention  of  certain  improve- 
ments in  evaporating  sugar  consisted  in  applying  this 
law,  by  forcing  atmospheric  air  through  the  liquid  syrup, 
by  means  of  pipes,  the  ends  of  Avhich  were  carried  down 
nearly  to  the  bottom  of  the  vessel  containing  the  solu- 
tion ;  and  it  is  obvious  that  any  person  who  should  apply 
the  same  law  to  the  same  purpose,  though  by  a  different 
apparatus,  would  practise  the  same  invention.'  Although, 
therefore,  it  is  not  safe,  in  reasoning  upon  the  patent  law, 
to  lay  down  general  rules,  of  an  abstract  character,  with 
the  purpose  of  describing  what  every  inventor  appropri- 
ates to  himself,  without  regard  to  the  particular  circum- 
stances of  the  invention,  yet  it  is,  on  the  other  hand, 
equally  unsafe  to  assume,  because  the  properties  of  mat- 
ter, or  the  laws  of  physics,  or  the  forces  of  nature,  are 
common  property,  that  no  inventor  can  establish  a  claim 
of  a  general  character,  irrespective  of  particular  methods 
or  forms  of  matter,  to  the  application  of  such  properties, 
laws,  or  forces  in  the  production  of  a  certain  effect. 

It  is,  in  truth,  wholly  incorrect  to  say  that  the  inventor, 
in  such  cases,  because  his  patent  is  held  to  embrace  such 
a  general  claim,  monopolizes  the  law,  property,  or  quality 
of  matter  which  he  has  applied  by  a  particular  means  to 
the  accomplishment  of  a  certain  end.  His  patent  leaves 
the  law,  property,  or  quality  of  matter,  precisely  where  it 
found  it,  as  common  property,  to  be  used  by  any  one,  in 
the  production  of  a  new  end,  by  a  new  adaptation,  of  a 
different  character.  It  appropriates  the  law,  property,  or 
quality  of  matter,  only  so  far  as  it  is  involved  in  the  sub- 
ject with  which,  the  means  by  which,  and  the  end  for 
which  the  inventor  has  applied  it ;  and  this  application 

'  Post,  p.  307. 


Xxxiv  PRELIMINARY    OBSERVATIONS. 

constitutes  the  essence  and  substance  of  the  invention,  in 
all  cases,  and  is  in  reality  what  the  patentee  has  invented. 
He  cannot  be  deprived  of  it,  without  violating  the  prin- 
ciples on  which  all  property  in  invention  rests,  and  deny- 
ing the  whole  policy  of  the  patent  law.  The  test  which 
marks  the  extent  and  nature  of  his  just  appropriation  is 
the  same  that  is  applicable  to  every  invention. 

This  test  may  be  stated  thus ;  that  the  truth,  law,  prop- 
erty, or  quality  of  matter,  which,  by  reason  of  its  appli- 
cation, enters  into  the  essence  of  an  invention,  may  be 
appropriated,  to  the  extent  of  every  application,  which, 
according  to  the  principles  of  law,  and  the  rules  of  logic, 
is  to  be  deemed  piracy  of  the  original  invention. 

One  of  the  most  well  settled  as  well  as  soundest  doc- 
trines of  the  patent  law,  is,  that  where  form,  arrange- 
ment of  matter,  proportion,  method  of  construction,  or 
apparatus  employed,  are  not  of  the  essence  of  the 
invention,  any  changes  introduced  in  them,  which  do 
not  effect  a  change  in  the  characteristic,  or  purpose  of 
the  invention,  are  changes  in  immaterial  circumstances. 
When  the  patent  is  a  patent  for  form,  or  particular 
arrangement,  or,  for  the  apparatus  devised  to  accom- 
plish a  particular  effect,  changes  in  these  respects  will 
be  changes  in  the  subject-matter  of  the  invention ;  but 
in  cases  where  the  invention  has  a  characteristic  or 
an  aggregate  of  characteristics,  independent  of  particular 
form,  method,  arrangement,  or  apparatus,  changes  in  these 
things  amount  only  to  the  substitution  of  one  equivalent 
for  another,  unless  they  cause  a  change  in  the  character- 
istic, essence,  or,  as  it  is  commonly  called,  the  principle  of 
the  invention.  This  is  very  clearly  seen  in  the  case  'bf 
machinery.  The  characteristic,  or  principle  of  the  inven- 
tion, consists  in  producing  a  certain  effect  by  the  appli- 


PRELIMINARY    OBSERVATIONS.  XXXV 

cation  of  motion,  through  a  form  of  apparatus  adapted 
to  that  result.  But  if  the  same  effect  of  the  combined 
operation  of  the  different  parts  of  the  mechanism  can  be 
produced  by  substituting  a  different  contrivance,  which 
does  not  change  the  characteristic  of  the  machine,  but  is 
a  mere  equivalent  for  the  part  for  which  it  is  substituted, 
such  a  substitution  is  only  a  different  mode  of  practising 
the  same  invention. 

In  this  sense,  all  inventions  are  independent  of  form, 
except  those  whose  entire  essence,  purpose,  and  charac- 
teristics begin  and  end  in  form  alone  ;  as  would  be  the 
case  with  the  manufacture  of  a  sphere,  or  a  cube,  for  the 
first  time  ;  and  as  is  the  case,  with  all  manufactures,  the 
utility  and  advantage  and  proposed  object  of  which 
depend  on  form.  But  where  there  is  a  purpose  that 
does  not  begin  and  end  in  form  alone,  where  the  form  or 
arrangement  of  matter  is  but  the  means  to  accomplish  a 
result  of  a  character  which  remains  the  same,  through  a 
certain  range  of  variations  of  those  means,  the  invention 
is  independent  of  form,  and  arrangement,  to  this  extent, 
that  it  embraces  every  application  of  means  which  accom- 
plishes the  result  without  changing  its  nature  and  char- 
acter. In  other  words,  it  may  be  stated,  as  a  general 
proposition,  that  in  the  characteristic,  or  principle  of  an 
invention,  are  embraced  the  truth,  law,  property,  or  quality 
of  matter,  which  is  applied  to  the  production  of  a  result, 
and  the  result  of  such  application  ;  and  that,  by  reason 
of  such  application,  the  truth,  law,  property,  or  quality  of 
matter  is  appropriated,  to  the  extent  of  all  other  applica- 
tions which  a  jury,  under  the  guidance  of  the  law,  shall 
consider  as  a  piracy  of  the  former. 

In  coming  to  this  result,  the  Patent  Law  establishes  no 
monopoly  beyond  the  fair  fruits  of  actual  invention.     It 


XXXVi  PRELIMINARY    OBSERVATIONS. 

protects  the  real  inventor  in  the  enjoyment  of  what  he 
was  the  first  to  produce  ;  and  it  recognizes,  as  substantive 
inventions,  all  changes  which  may  be  produced  in  the 
same  line  of  experiment,  or  in  the  same  department  of 
labor,  which  introduce  new  characteristics,  new  results, 
or  new  advantages,  not  embraced  by  the  former  invention. 
As  long  as  the  Patent  Law  exists  at  all,  to  afford  protec- 
tion to  the  labors  of  ingenious  men,  it  must  proceed  upon 
this  fundamental  principle.  It  is  now  too  late  in  the 
history  of  civilization,  to  question  the  policy  of  this  pro- 
tection, which  forms  a  prominent  feature  in  the  domestic 
polity  of  every  nation  which  has  reached  any  considera- 
ble stage  of  progress  in  the  arts  of  civilized  life. 

It  will  be  seen  in  the  following  pages,  how  far  these 
views  have  prevailed  in  the  administration  of  the  Patent 
Law,  in  England  and  America,  and  to  what  extent  they 
have  been  developed,  in  particular  cases.  They  have 
led,  in  the  construction  of  patents  in  England,  to  a  some- 
what different  spirit  from  that  which  formerly  animated 
the  courts  of  law ;  for  formerly,  the  judges  exercised 
their  ingenuity  to  defeat  every  patent  that  came  before 
them,  if  it  could  by  possibility  be  defeated.  This  was 
done  upon  the  notion,  that  a  patent  is  the  grant  of  a 
privilege  against  common  right ;  and  hence  some  judges 
were  in  the  habit  of  saying  that  they  were  "  not  favorers 
of  patents."  But  within  the  last  twenty  years,  a  differ- 
ent view  has  been  adopted  ;  the  more  just  and  liberal 
doctrine  has  been  acted  upon,  that  public  policy  requires 
the  encouragement  of  the  inventive  powers  of  ingenious 
men,  and  that  this  policy  is  supported  by  every  consid- 
eration of  justice.  The  consequence  has  been,  that  the 
Patent  Law  has  made  greater  advances,  in  England, 
within  the  last  twenty  years,  towards  a  consistent  and 


PRELIMINARY     OBSERVATIONS.  XXXVll 

admirable  system  of  justice,  than  it  has  ever  made  before 
during  the  whole  period  that  has  elapsed  since  the  enact- 
ment of  the  statute  of  Monopolies. 

In  America,  the  more  liberal  policy  has  always  pre- 
vailed, from  the  time  when  patent-rights  came  under  the 
protection  of  the  General  Government ;  and  the  rule  has 
been  often  laid  down  by  the  courts  of  the  United  States 
with  a  good  deal  of  strength  —  as  if  in  obedience  to  the 
spirit  of  the  Constitution  —  that  patents  ought  to  be  con-  - 
strued  liberally.  Perhaps  the  general  language  which 
has  thus  been  employed  by  judges,  would  lead  to  the 
conclusion,  that  the  leaning  of  the  courts  is,  systemati- 
cally, in  favor  of  the  patentee  and  against  the  public ; 
but  this  tendency  has  not  been  exhibited  so  strongly,  in 
practice,  as  to  derange  the  administration  of  the  law. 

The  truth  is,  a  patent  should  be  construed  as,  what  it 
really  is,  in  substance,  namely,  a  contract  or  bargain 
between  the  patentee  and  the  public,  upon  those  points 
which  involve  the  rights  and  interests  of  either  party. 
These  points  relate  to  the  extent  of  the  claim,  and  to  the 
intelligibility  of  the  description  for  the  purposes  of  prac- 
tice. The  first  is  universally  a  question  for  the  court ; 
the  last  is  generally  a  question  for  the  jury,  under  the 
direction  of  the  court.  As  to  the  first  question  —  the 
extent  of  the  claim  presents  at  once  the  relations  between 
the  patentee  and  the  public ;  for  it  involves,  among  other 
things,  the  inquiry,  whether  the  patentee  has  claimed  any 
thing  beyond  what  was  really  his  own  invention.  If,  in 
representing  himself  as  the  inventor  of  the  thing  for 
which  he  has  asked  and  received  a  patent,  the  inventor 
has  included  in  his  claim  any  thing  that  existed  before,  he 
has  made  a  representation  untrue  in  point  of  fact ;  and 
whether  he  has  made  this  representation  intentionally  or 


XXXviii  PRELIMINARY    OBSERVATIONS. 

unintentionally,  the  grant  of  the  patent  proceeds  upon  it, 
and  if  it  is  not  true,  the  grant  is  not  supported  by  an  ex- 
isting consideration,  such  as  the  inventor  has  represented 
it  to  be.  In  determining  this  question,  whether  the  pa- 
tentee has  really  included  in  his  claim  something  which 
he  did  not  invent,  two  things  are  to  be  ascertained  ;  first, 
whether  he  makes  use  of  any  thing  not  new ;  and  second, 
whether  that  thing,  according  to  the  fair  import  of  his 
language,  is  represented  to  be  a  part  of  the  invention 
which  he  claims  to  have  made.  The  fact  of  whether  he 
makes  use  of  any  thing  not  new,  is  a  question  depending 
upon  evidence,  if  it  is  not  manifest  on  the  face  of  the 
description.  It  is  upon  the  second  branch  of  the  inquiry, 
whether  the  old  thing  is  really  included  in  the  claim  of 
invention,  that  the  true  principles  of  construction  have  to 
be  applied.  Recollecting,  on  the  one  hand,  that  if  the 
public  have  been  misled,  the  patent  ought  not  to  stand, 
because  of  the  false  representation  5  and,  on  the  other 
hand,  that  a  construction,  which  will  destroy  the  patent, 
ought  not  to  be  adopted  lightly,  it  would  seem  to  be  the 
true  rule,  to  construe  the  patent  fairly,  and  so  as  to  arrive 
at  the  just  import  of  the  language  in  which  the  claim  is 
set  forth.  But  if,  after  applying  this  rule,  the  question 
remains  doubtful  whether  the  claim  is  not  broader  than 
the  invention,  then  the  rule  should  be  adopted,  in  favor 
of  the  patent,  that  the  patentee  is  to  be  presumed  to  have 
intended  to  claim  no  more  than  he  has  actually  invented. 
Every  patentee  is  presumed  to  know  the  law,  and  to 
know  that  if  he  includes  in  his  claim  something  which  he 
has  not  invented,  his  claim  is  void.  Such  a  claim  is  a 
kind  of  fraud  upon  the  public,  with  whom  the  applicant 
offers  to  enter  into  a  contract,  when  he  asks  for  his 
patent ;  and  fraud  is  never  to  be  presumed,  but  is  always 


PRELIMINARY    OBSERVATIONS.  XXXIX 

to  be  proved.  The  rule,  therefore,  which  presumes,  in 
doubtful  cases,  that  the  patentee  intended  to  claim  no 
more  than  his  actual  invention,  is  founded  in  a  maxim  of 
general  application  to  contracts  ;  and  it  will  be  seen,  in 
practice,  that  it  has  no  tendency  to  support  patents  which 
ought  not  to  be  supported,  or  to  encourage  loose  and 
sweeping  claims.  In  all  cases  which  are  not  doubtful,  — 
where  it  is  manifest  that  the  claim  admits  of  no  construc- 
tion but  that  which  makes  it  too  comprehensive  to  be 
valid,  —  this  rule  will  have  no  application.  The  impo- 
sition attempted  will  be  apparent,  and  the  fraud  —  so  far 
as  it  is  a  fraud  —  will  not  require  to  be  presumed,  but 
will  stand  proved. 

This  rule,  although  not  distinctly  announced,  by  any 
of  our  courts,  has  much  to  support  it,  in  several  authori- 
ties. Judges  would  seem  to  have  had  a  rule  of  this 
kind  in  view,  when  they  have  construed  patents  un- 
der the  guidance  of  the  maxim,  ut  res  magis  valeat, 
quam  pereat.  The  use  of  this  maxim,  which  has  often 
furnished  the  spirit  of  construction  in  particular  cases, 
implies  that  the  claim  is  to  be  supported,  if  it  can  be 
done  without  a  violation  of  principle.  But  the  rule  has 
been  distinctly  applied,  in  England,  by  the  Court  of  Com- 
mon Pleas,  that  the  patentee  is  not  to  be  presumed  to 
have  intended  to  claim  things  which  he  must  have  known 
to  be  in  common  use,  although  in  describing  his  inven- 
tion, he  has  not  expressly  excluded  them  from  the  claim. 
There  are  also  cases,  in  this  country,  where  it  has  been 
held  not  to  be  necessary  to  use  words  of  exclusion,  in 
reference  to  details,  where  it  appears  from  the  whole 
description  of  the  invention  that  the  new  is  capable  of 
being  distinguished  from  the  old. 

The  same  rule,  in  cases  of  doubt,  should  be  applied  to 


Xl  PRELIMINARY    OBSERVATIONS. 

the  construction,  where  the  question  is,  whether  the  pa- 
tentee has  claimed  as  much  as  he  has  invented ;  that  is 
to  say,  the  specification  should  be  so  construed,  as  to 
make  the  claim  coextensive  with  the  actual  invention,  if 
this  can  be  done  consistently  with  principle. 

But  beyond  this  rule,  it  is  not  necessary  or  wise  to  go, 
in  the  construction  of  patents.  By  giving  the  patentee 
the  benefit  of  this  presumption,  in  cases  of  doubt,  the 
doubt  will  be  removed,  ,and  the  patent  will  remain  good 
for  the  real  invention.  But  where  there  is  no  room  for 
doubt,  and  no  occasion  for  the  application  of  the  rule,  but 
the  claim  is  manifestly  broader  or  narrower  than  the  real 
invention,  there  can  be  no  hesiiation  about  the  judgment 
to  be  pronounced,  especially  since  the  provisions  of  our 
law,  by  which  a  patent  may  remain  valid  pro  tanto,  after 
the  real  invention  of  the  party  has  been  judicially  ascer- 
tained. 


PART   I. 

THE   SUBJECT-MATTER  OF   PATENTS, 


AND    THE 


PAKTlEtt  EiN TITLED  THERETO. 


PART     I. 

THE   SUBJECT-MATTER  OF  PATENTS,  AND  THE  PAR- 
TIES  ENTITLED  THERETO. 


CHAPTER    I 


NOVELTY    AND    UTILITY, 


>§.  1.  The  Patent  Act  now  in  force  in  this  country  requires  that 
the  subject  of  every  patent  should  be  "  new  and  useful," 
whether  it  be  an  art,  machine,  manufacture,  or  composition  of 
matter,  or  an  improvement  on  any  of  these  things.'  The 
inquiry  that  meets  us  on  the  threshold  is,  what  constitutes 
novelty,  and  what  constitutes  utility,  in  the  sense  of  the  statute  ? 

<§>  2.  It  is  one  of  the  first  principles  of  patent  law,  that  a  patent 
cannot  be  obtained  for  a  mere  philosophical  or  abstract  theory, 
be  the  subject  what  it  may  :  it  can  only  be  for  theory  re- 
duced to  practice.  If,  therefore,  the  subject  of  the  patent  be 
an  art,  it  must  be  an  art  actually  put  in  practice  and  unknown 
before;  —  if  it  be  a  machine,  it  must  be  substantially  new  in 
its  structure  and  mode  of  operation,  and  not  merely  changed  in 
form  or  in  the  proportion  of  its  parts  :  *  —  if  it  be  a  manufac- 
ture, or  composition  of  matter,  it  must  be  something  actually 

»  Act  of  July  4,  1836,  c.  357,  ^  6. 

^  Lowell  V.  Lewis,  1  ]\Iason's  R.   183,  187;  Wyeth  i'.  Stone,  1  Story's 
R.  273,  279. 


4  LAW    OF    PATENTS. 

made  and  substantially  different  from  anything  the  making  of 
which  was  before  known.* 

^  3.  In  machinery,  it  is  not  necessary,  in  order  to  defeat  a 
patent,  that  a  machine  should  have  existed  in  every  respect  similar 
to  that  patented ;  for  a  mere  change  of  former  proportions  will 
not  support  a  patent.  If  a  patent  is  claimed  for  a  whole  ma- 
chine, it  must  in  substance  be  a  new  machine  ;  that  is,  it  must 
be  a  new  mode,  method,  or  application  of  mechanism,  to  pro- 
duce some  new  effect,  or  to  produce  an  old  effect  in  a  new 
way.-  In  cases  of  difficulty,  where  the  machinery  is  compli- 
cated, and  many  of  the  elements  employed  are  powers  and  in- 
struments of  motion  long  known,  the  test,  which  is  to  de- 
termine the  boundaries  between  what  was  known  and  used 
before,  and  what  is  new,  is,  to  observe  what  is  new  in  the 
mode  of  operation.  If  the  principles  of  a  machine,  that  is,  the 
peculiar  device  or  manner  of  producing  the  given  effect,  be 
new,  although  the  effect  itself  be  old,  a  patent  may  be  claimed 
for  the  machine.^ 

>§,  4.  On  the  other  hand,  the  mere  purpose,  or  effect  of  a  ma- 
chine, however  novel,  can  furnish  no  ground  for  a  valid  patent, 
unless  the  machine  itself,  the  instrument  by  which  the  purpose  is 
effected,  is  substantially  new.  The  application  of  what  is  old 
to  a  new  purpose  is  not  patentable.* 

•§,  5.  It  is  necessary,  however,  to  consider  somewhat  in  detail 
what  amount  of  invention  is  essential  to  support  a  patent. 


'  Ryan  v.  Goodwin,  3  Sumner's  R.  518. 

*  Woodcock  V.  Parker,  1  Gallison's  R.  438,  440  ;  Whittemore  v.  Cutter, 
Ibid.  480.  If  new  effects  are  produced  by  an  old  machine  in  its  unaltered 
state,  no  patent  can  be  legally  supported,  for  it  is  a  patent  for  a  legal 
effect  only.     Ibid. 

'  Whitemore  v.  Cutter,  1  Gallis.  480,  481. 

*■  Winans  f.  Boston  and  Providence  Railroad,  2  Story's  R.  412;  Bean 
f.  Sraallwood,  Ibid.  408,  411. 


NOVELTF    AND    UTILITY. 


"§)  6.  It  is  often  laid  down,  that  provided  the  invention  is  sub- 
stantially new,  it  is  of  no  consequence  whether  a  great  or  small 
amount  of  thought,  ingenuity,  skill,  labor,  or  experiment  has 
been  expended,  or  whether  it  was  discovered  by  mere  accident/ 


1  In  Crane  r.  Price,  Webster's  Pat.  Cas.  411,  Sir.  N.  C.  Tindall,  C.  J. 
said  "  But  in  point  of  law,  the  labor  of  thought  or  experiment,  and  the  ex- 
penditure of  money,  are  not  the  essential  grounds  of  consideration  on  which 
the  question,  whether  the  invention  is  or  is  not  the  subject-matter  of  a  patent 
ought  to  depend.  For  if  the  invention  be  new  and  useful  to  the  public,  it  is 
not  material  whether  it  be  the  result  of  long  experiment  and  profound  search, 
or  whether  by  some  sudden  and  lucky  thought,  or  mere  accidental  discovery." 
So  also  in  Earle  v.  Sawyer,  4  Mas.  6,  Mr.  Justice  Story  said  :  "  The  thing 
to  be  patented  is  not  a  mere  elementaiy  principle,  or  intellectual  discovery, 
but  a  principle  put  in  practice  and  applied  to  some  art,  machine,  manufacture 
or  composition  of  matter.  It  must  be  neio,  and  not  known  or  used  before  the 
application;  that  is,  the  party  must  have  found  out,  created,  or  constructed 
some  art,  machine,  &c.,  or  improvement  on  some  art,  machine,  &c.,  which 
had  not  been  previously  found  out,  created  or  constructed  by  any  other  per- 
son. It  is  of  no  consequence  whether  the  thing  be  simple  or  complicated  ; 
whether  it  be  by  accident,  or  by  long,  laborious  thought,  or  by  an  instan- 
taneous flash  of  the  mind  that  it  is  first  done.  The  law  looks  to  the  fact, 
and  not  to  the  process  by  which  it  is  accomplished.  It  gives  the  first  inventor 
or  discoverer  of  the  thing  the  exclusive  right,  and  asks  nothing  as  to  the  mode 
or  extent  of  the  application  of  his  genius  to  conceive  or  execute  it.  It  must 
also  be  useful,  that  is,  it  must  not  be  noxious  or  mischievous,  but  capable  of 
being  applied  to  good  purposes  ;  and  perhaps  it  may  also  be  a  just  interpre- 
tation of  the  law,  that  it  meant  to  exclude  things  absolutely  frivolous  and 
foolish.  But  the  degree  of  positive  utility,  is  less  important,  in  the  eye  of 
the  law,  than  some  other  things,  though  in  regard  to  the  inventor,  as  a  meas- 
ure of  the  value  of  the  invention,  it  is  of  the  highest  importance. 

The  first  question  then  to  be  asked,  in  cases  of  this  nature,  is,  whether  the 
thing  has  been  done  before.  In  case  of  a  machine,  whether  it  has  been  sub- 
stantially constructed  before ;  in  case  of  an  improvement  of  a  machine, 
whether  that  improvement  has  ever  been  applied  to  such  a  machine  before, 
or  whether  it  is  substantially  a  new  combination.  If  it  is  new,  if  it  is  useful, 
if  it  has  not  been  known  or  used  before,  it  constitutes  an  invention,  within  the 
very  terms  of  the  act,  and,  in  my  judgment,  within  the  very  sense  and  in- 
tendment of  the  legislature.  I  am  utterly  at  a  loss  to  give  any  other  inter- 
pretation of  the  act ;  and,  indeed,  in  the  very  attempt  to  make  that  more  clear 
which  is  expressed  in  unambiguous  terms  in  the  law  itself,  there  is  danger 
of  creating  an  artificial  obscurity." 

1* 


5  LAW    OF    PATENTS. 

Still  it  is  sometimes  necessary  to  ascertain  what  bearing  the 
amount  of  thought,  design,  or  ingenuity  that  may  have  been 
expended,  has  upon  the  question  of  novelty.  It  may  not  be 
necessary  that  tliere  should  be  positive  evidence  of  design, 
thought,  or  ingenuity  ;  but  if  it  is  necessary  that  the  possibility 
of  these  qualities  having  been  exercised  should  not  be  excluded 
by  the  character  of  the  supposed  invention,  then  such  possibility 
becomes  one  test  of  the  sufficiency  of  invention.  While  the 
law  does  not  look  to  the  mental  process  by  which  the  invention 
has  been  reached,  but  to  the  result,  it  may  still  require  that  the 
result  should  be  such  as  not  to  exclude  the  possibility  of  some 
skill  or  ingenuity  having  been  exercised.  It  requires  this,  be- 
cause it  requires  that  the  subject-matter  of  a  patent  should  be 
something  that  has  not  substantially  existed  before.  While 
such  a  thing  may  have  been  produced  by  mere  accident,  and 
not  by  design,  yet  it  may  also  have  been  the  fruit  of  design 
and  study.  If,  however,  the  character  of  the  alleged  invention 
be  such,  that  no  design  or  study  could  by  possibility  have 
been  exercised  in  its  production,  then  its  character  is  strong 
proof  that  it  does  not  differ  substantially  from  what  had  been 
produced  before.  We  must  look,  therefore,  to  the  character 
and  purposes  of  the  invention,  and  not  to  the  actual  process  by 
which  it  was  produced,  in  order  to  see  that  the  possibility  of 
thought,  design,  ingenuity,  or  labor  having  been  exercised,  is 
not  excluded. 

<^  7.  Thus,  if  an  alleged  invention  is  absolutely  frivolous  and 
foolish,  though  it  may  have  the  element  of  novelty,  in  one  sense, 
it  is  not  the  subject  of  a  patent.  So,  too,  mere  colorable  varia- 
tions, or  slight  and  unimportant  changes,  will  not  support  a  patent ; 
as  the  immersion  of  cloth  in  a  steam  bath,  with  the  view  of 
damping  it,  instead  of  immersing  it  in  hot  water  ; '  and  the  sub- 
stitution of  steam  as  the  means  of  heating  hollow  rollers  over 


'  Rex  V.  Fupsell,  cited    in  Webster  on  the  Subject-Matter  of  Patents. 
p.  26. 


NOVELTY    AND    UTILITY. 


which  wool  was  to  be  passed,  instead  of  heating  them  by  the 
insertion  of  hot  iron  bars.'  In  such  cases,  if  the  consequences 
resulting  from  the  change  are  unimportant,  and  the  change 
consists  merely  in  the  employment  of  an  obvious  substitute,  the 
discovery  and  application  of  which  could  not  have  involved  the 
exercise  of  the  inventive  faculty,  in  any  considerable  degree, 
then  the  change  is  treated  as  merely  a  colorable  variation,  or  a 
double  use,  and  not  as  a  substantive  invention.^ 

v^  8.  On  the  other  hand,  the  utility  of  the  change,  and  the  con- 
sequences resulting  therefrom,  may  be  such,  as  to  show  that  the 
inventive  faculty  may  have  been  at  work ;  and  in  such  cases, 
though,  in  point  of  fact,  the  change  was  the  result  of  accident, 
its  utility  and  importance  will  afford  the  requisite  test  of  the 
amount  of  invention  involved  in  the  change.  Thus  the  mere 
substitution  of  one  metal  for  another,  in  a  particular  manufac- 
ture, might  be  the  subject  of  a  patent,  if  the  new  article  were 
better,  more  useful,  or  cheaper  than  the  old.'  In  Crane's  patent 
the  invention  consisted  in  the  use  of  anthracite  and  hot  air- 
blast,  in  the  manufacture  of  iron,  in  the  place  of  bituminous 


'  Rex  V.  Lister,  cited  in  Webster  on  the  Subject-Matter  of  Patents,  p.  26. 

*  The  illustrations  put  by  Lord  Abinger,  in  Losh  v.  Hague,  Webster's 
Pat.  Cas.  208,  present  the  distinctions  here  taken  in  an  amusing  form.  "  If 
a  Surgeon  had  gone  to  a  Mercer,  and  said, '  I  see  how  well  your  scissors  cut,' 
and  he  said '  I  can  apply  them  instead  of  a  lancet,  by  putting  a  knob  at  the  end,' 
that  would  be  quite  a  different  thing,  and  he  might  get  a  patent  for  that ;  but 
it  would  be  a  very  extraordinary  thing  to  say,  that  because  all  mankind  have 
been  accustomed  to  eat  soup  with  a  spoon,  that  a  man  could  take  out  a  pa- 
tent because  he  says  you  might  eat  peas  with  a  spoon." 

'  "  If  the  composition  of  matter  now  called  a  silver  tea-pot,  had  existed  be- 
fore the  introduction  of  tea,  and  been  used  for  making  similar  infusions  from 
other  ingredients,  its  appropriation  or  application  to  making  tea,  could  not  have 
been  the  subject-matter  of  a  patent,  this  being  the  double  use  of  a  known 
thing,  as  of  a  medicine  celebrated  for  one  disease,  to  another;  but  if  such  a 
composition  of  matter  were  not  known,  there  might  have  been  patents  for  a 
silver  pot,  as  well  as  for  the  first  earthen  tea-pot.  No  one  can  say  that  a 
silver  and  an  earthern  pot  are  the  same  manufacture."  Webster  on  the 
Subject-Matter,  p.  25,  note. 


8  LAW    OF    PATENTS. 

coal  and  hot  ail-blast ;  and  the  Court  of  Common  Pleas  said, 
«  We  are  of  opinion,  tliat  if  the  result  produced  by  such  a  com- 
bination be  either  a  new  article,  or  a  better  article,  or  a  cheaper 
article,  to  the  public,  than  that  produced  before  by  the  old 
method,  that  such  a  combination  is  an  invention  or  manufacture 
intended  by  the  statute,  and  may  well  become  the  subject  of  a 
patent."  '  But  if  the  change  be  immaterial  and  productive  of 
no  beneficial  result,  so  that  the  end  can  be  attained  as  well 
without  as  with  the  supposed  improvement,  it  will  not  support  a 
patent.' 

>§,  9.  A  concise  and  lucid  dictum  of  Buller,  J.  presents  a  capital 
test  of  the  sufficiency  of  many  inventions :  "  If  there  be  anything 
material  and  new  which  is  an  improvement  of  the  trade,  that 
will  be  sufficient  to  support  a  patent."  ^  The  term  "  improve- 
ment of  the  trade  "  was  obviously  used  by  the  learned  judge  in 
the  commercial  sense,  meaning  the  production  of  the  article  as 
good  in  quality  at  a  cheaper  rate,  or  better  in  quality  at  the 
same  rate,  or  with  both  these  consequences  partially  combined." 
There  are  many  cases  where  the  materiality  and  novelty  of  the 
change  can  be  judged  of  only  by  the  effect  on  the  result ;  and 
this  effect  is  tested  by  the  actual  improvement  in  the  process  of 
producing  the  article,  or  in  the  article  itself,  introduced   by  the 

'  Crane  v.  Price,  Webs.  Pat.  Cas.  409.  It  has  been  suggested,  that  if 
the  innmersion  of  cloth  in  steam,  instead  of  hot  water,  had  been  attended 
with  any  considerable  improvement  in  the  manufacture,  the  change  would 
have  been  held  a  sufficient  substantive  invention  to  have  supported  a  patent. 
Webster  on  the  Subject-Malter,  p.  26,  note  (t.) 

^  In  Arkvvright's  case,  there  was  evidence  that  the  filleted  cylinder  had 
been  used  before,  both  in  the  way  in  which  he  used  it,  and  in  another  way. 
Buller,  J.  said,  "  If  it  were  in  use  both  ways,  that  alone  is  an  answer  to  it. 
If  not,  there  is  another  question, —  whether  the  stripe  in  it  makes  any  mate- 
rial alteration  1  For  if  it  appears,  as  some  of  the  witnesses  say,  to  do  as 
w^ell  without  stripes,  and  to  answer  the  same  purpose,  if  you  suppose  the 
stripes  never  to  have  been  used  before,  that  is  not  such  an  invention  as  will 
support  the  patent."     Rex  v.  Arkwright,  Webs.  Pat.  Cas.  72,  73. 

'  Rex  V.  Arkwright,  Webs.  Pat.  Cas.  71. 

*  See  Mr.  Webster's  note  on  this  dictum,  ul  supra. 


NOVELTY    AND    UTILITY.  » 

alleged  invention.  To  these  cases  this  test  is  directly  applicable. 
Thus,  in  Lord  Dudley's  patent,  the  change  consisted  in  the  sub- 
stitution of  pit  coal  for  charcoal  in  the  manufacture  of  iron,  and 
it  was  new  both  in  the  process  of  manufacture  and  in  the  con- 
stitution of  the  iron.'  In  Neilson's  patent,  the  change  consisted 
in  blowing  the  furnace  with  hot  air  instead  of  cold ;  and  in 
Crane's,  the  substitution  of  anthracite  as  fuel,  in  combination 
with  the  hot  blast.  Both  these  processes  were  great  improve- 
ments, leading  to  a  cheaper  production  of  iron  of  as  good  or  a 
better  quality.*  In  Derosne's  patent  the  invention  was  by  the 
application  of  charcoal  in  the  filtering  of  sugar,  being  a  change 
in  the  process  of  manufacture,  so  as  to  produce  sugar  in  a  way 
unknown  before.^  In  Hall's  case,  the  use  of  the  flame  of  gas, 
to  singe  off  the  superfluous  fibres  of  lace,  eflfected  completely 
what  had  been  done  before  in  an  imperfect  manner.^ 

<§>  10.  In  these  cases  the  subject  of  each  invention  was  not  the 
particular  machinery  or  apparatus  by  which  the  new  application 
was  to  be  made  available,  but  it  was  the  new  application  itself 
of  certain  known  substances  or  agents,  to  produce  a  particular 
result,  differing  either  in  the  process  or  in  the  article  produced, 
from  the  former  methods  of  producing  the  same  thing,  and 
thereby  producing  a  better  article,  or  producing  it  by  superior 
and  cheaper  processes.  It  is  obvious  that  the  result,  in  such 
cases,  furnishes  a  complete  test  of  the  sufficiency  of  invention ; 
because  the  importance  of  tiie  result  shows  that  whether  actually 
exercised  or  not,  the  possibility  of  the  exercise  of  thought,  de- 
sign, ingenuity,  and  skill  is  not  excluded.  The  merit  is  the 
same,  whether  the  invention  was  the  fruit  of  accident  or  design  ; 
because  the  merit  consists  in  having  realized  the  idea  and  car- 
ried it  out  in  practice.  But  if  the  idea  and  the  practice  involve 
no  beneficial  results,  superior  to  what  had  been  before  attained, 
there  could  have  been  no  scope  for  the  exercise  of  the  inventive 


'  Webster's  Pat.  Cas.  14.  '  Ibid.  191,  273,  375. 

'  Webs.  Pat.  Cas.  152.  *  Ibid.  97. 


10  LAW    OF    PATENTS. 

faculty,  because  the  result  excludes  the  supposition  of  its  having 
been  exercised. 

.§,11.  The  same  test  is  also  indirectly  applicable  to  another  class 
of  cases,  where  a  particular  instrument  or  machine,  or  combina- 
tion of  machinery  is  the  subject  of  the  patent.  As  in  Ark- 
wright's  case,  tlie  gist  of  the  objection  was,  that  the  alleged 
new  macliinery  did  not  serve  the  purpose  of  spinning  cotton 
better  than  the  machinery  formerly  used.'  And  wherever  this 
objection  lies  to  a  particular  machine  or  instrument,  there  can- 
not be  said  to  be  a  sufficiency  of  invention  to  support  a  patent.' 
In  the  case  of  Brunton's  patent,  which  covered  two  inven- 
tions, the  one  was  for  an  improvement  in  the  construction  of 
chain  cables,  and  the  other  for  an  improvement  in  the  con- 
struction of  anchors.  As  to  the  first  invention,  chain  cables 
had  been  formerly  made  with  twisted  links,  a  wrought  iron  stay 
being  fixed  across  the  middle  of  the  opening  of  each  link  to 
keep  it  from  collapsing.  The  alleged  improvement  consisted 
in  making  the  links  with  straight  sides  and  circular  ends,  and 
in  substituting  a  cast-iron  stay  with  broad  ends,  adapted  to  the 
sides  of  the  link,  and  embracing  them.  This  combination  of 
the  link  and  the  stay  was  calculated  to  sustain  pressure  better 
than  the  old  form.  The  court  considered  the  substitution  of  a 
broad-headed  stay  in  the  link,  in  place  of  a  pointed  stay,  under 
the  circumstances,  a  sufficient  invention  to  support  a  patent,  on 
account  of  the  utility  of  the  substitution,  in  connection  with 
the  principles  to  be  carried  out,  viz.,  the  resistance  of  pressure 
according  to  the  action  of  forces.' 


'  The  King  v.  Arkwright,  Webs.  Pat.  Cas.  71. 

»  In  Morgan  r.  Seaward,  2  M.  &.  Welsh.  562,  Parke,  B.  said,  "On  a 
review  of  the  cases,  it  may  be  doubted  whether  the  question  of  utility  is  any- 
thing more  than  a  compendious  mode,  introduced  in  comparatively  modern 
times,  of  deciding  the  question  whether  the  patent  be  void  under  the  statute 
of  monopolies." 

3  Brunlon  v.  Ilawkes,  4  B.  &  Aid.  510,  550.  Abbott  C.  J.  said  "  As  at 
present  advised,  I  am  inclined  to  think  that  the  combination  of  a  link  of  this 


NOVELTY    AND    UTILITY. 


11 


<§,  ]  2.  In  respect  of  the  anchor,  the  invention  consisted  in  mak- 
ing the  two  flukes  in  one,  with  such  a  thickness  of  metal  in  the 
middle,  that  a  hole  might  be  pierced  through  it  for  the  insertion 
of  the  shank,  instead  of  joining  the  two  flukes  in  two  distinct 
pieces  by  welding  to  the  shank.  The  hole  was  made  conical 
or  bell-mouthed,  so  that  no  strain  could  separate  the  flukes  from 
the  shank,  by  which  means  the  injury  to  the  iron,  from  repeated 
heating,  was  avoided,  only  one  heating  being  necessary  to  unite 
the  end  of  the  shank  perfectly  with  the  side  of  the  conical  hole. 
But  it  appeared  at  the  trial,  that  the  improvement  in  the  anchor 
was  the  avoiding  the  welding,  by  means  well-known  and  prac- 
tised in  cases  extremely  similar.  It  was  a  case  of  the  simple 
application  of  a  mode  known  and  practised  for  a  similar  pur- 
pose in  other  like  cases  ;  and  it  did  not  appear  that  anchors  so 
made  were  superior  to  those  which  had  been  made  before.  The 
court  were  therefore  unanimously  of  opinion  that  the  patent,  in 
respect  of  the  anchor,  could  not  be  sustained.' 

particular  form,  with  the  stay  of  the  form  which  he  uses,  althoufjh  the  form 
of  the  link  might  have  been  known  before,  is  so  far  new  and  beneficial,  as  to 
sustain  a  patent  fin  that  part  of  the  invention,  if  the  patent  had  been  taken  out 
for  that  alone."  Baylcy  J.  said,  "  The  improvement  in  that  respect,  as  it 
seems  to  me,  is  shortly  this ;  so  to  apply  the  link  to  the  force  to  operate  on 
it,  that  that  force  shall  operate  in  one  place,  namely  at  the  end ;  and  this  is 
produced  by  having  a  bar  across,  which  has  not  the  defect  of  the  bar  for- 
merly used  for  similar  purposes.  The  former  bars  weakened  the  link,  and 
they  were  weak  themselves,  and  liable  to  break,  and  then  if  they  broke,  there 
might  be  a  pressure  in  some  other  part.  Now,  from  having  a  broad-ended 
bar  instead  of  a  conical  one,  and  having  it  to  lap  round  the  link  instead  of 
perforating  it,  that  inconvenience  would  be  avoided  ;  and  therefore  the  pres- 
ent impression  on  ray  mind  as  to  this  part  of  the  case  is,  that  the  patent  might 
be  supported." 

'  Abbott,  C.  J.  said.  "  The  mode  of  joining  the  shank  to  the  flukes  of  the 
anchor,  is  to  put  the  end  of  the  shank,  which  is  in  the  form  of  a  solid  cyl- 
inder, through  the  hollow  and  conical  apperture,  and  it  is  then  made  to  fill 
up  the  hollow  and  to  unite  itself  with  it.  Now  that  is  precisely  the  mode  by 
which  the  shank  of  the  mushroom  anchor  is  united  to  the  mushroom-top  ;  by 
which  the  shank  of  the  adze-anchor  is  united  to  its  other  parts.  It  is  indeed 
the  mode  by  which  the  different  parts  of  the  common  hammer  and  the  pick- 
axe also,  are  united  together.  Now  a  patent  for  a  machine,  each  part  of 
which  was  in  use  before,  but  in  which  the  combination  of  different  parts  is 


12  LAW    OF    PATENTS. 

<§,  13.  In  like  manner,  where  the  substance  of  an  invention  con- 


new,  and  a  new  result  is  produced,  is  good  ;  because  there  is  a  novelty  in  the 
combination.     But  here  the  case  is  perfectly  different ;  formerly  three  pieces 
were  united  together;    the  plaintiff  only  unites  two;    and,  if  the  union  of 
these  two  had  been  effected  in  a  mode  unknown  before,  as  applied  in  any  de- 
gree to  similar  purposes,  I  should  have  thought  it  a  good  ground  for  a  patent ; 
but  unfortunately,  the  mode  was  well  known  and  long  practised.      I  think 
that  a  man  cannot  be  entitled  to  a  patent  for  uniting  two  things  instead  of 
three,  where  that  union  is  effected  in  a  mode  well  known  and  long  practised 
for  a  similar  purpose.      It  seems  to  me  therefore,  that  there  is  no  novelty  in 
that  part  of  the  patent  as  affects  the  anchor ;  and,  if  the  patent  had  been 
taken  out  for  that  alone,  I  should  have  had  no  hesitation  in  declaring  that  it 
was  bad."      Bayley  J.  said,  "As  to  the  ship's  anchor,  in  substance  the 
patent  is,  for  making  in  one  entire  piece,  that  which  was  formerly  made  in 
two.     The  two  flukes  of  the  anchor  used  to  consist  of  distinct  pieces  of  iron 
fastened  to  the  shank  by  welding.     In  the  present  form  the  flukes  are  in  one 
piece,  and,  instead  of  welding  them  to  the  shank,  a  hole  is  made  in  the  cen- 
tre, and  the  shank  introduced  through  the  hole.'    Could  there  be  a  patent  for 
making  in  one  entire  piece,  what  before  had  been  made  in  two  pieces?     I 
think  not,  but  if  it  could,  I  think  that  still  this  would  not  be  new.      In  the 
mushroom  and  the  adze  anchors,  the  shank  is  introduced  into  the  anchor  by 
a  hole  in  the  centre  of  a  solid  piece  ;  and  in  reality  the  adze  anchor  is  an  an- 
chor with  one  fluke,  and  the  double-fluke  anchor  is  an  anchor  with  two  flukes. 
After  having  had  a  one-fluked  anchor,  could  you  have  a  patent  for  a  double- 
fluked  anchor?      I  doubt  it  very  much.     After  the  analogies  alluded  to  in 
argument,  of  the  hammer  and  pickaxe,  1  do  not  think  that  the  mere  intro- 
ducing the  shank  of  the  anchor,  which  I  may  call  the  handle,  in  so  similar  a 
mode,  is  an  invention  for  which  a  patent  can  be  sustained.   It  is  said  in  this  case 
that  the  mushroom  anchor  and  adze  anchor,  are  not  ships'  anchors,  but  mooring 
anchors.    I  think  they  are  ships'  anchors  ;  they  are  not  indeed  such  anchors  as 
ships  carry  with  them  for  the  purpose  of  bringing  the  ship  up  ;  but  if  the  ship  is 
required  to  be  stationary,  at  a  particular  place,  then  the  common  mode  of  making 
it  stationary,  is  by  the  mushroom  anchor.   So  the  mode  adopted  to  bring  a  ship, 
containing  a  floating  light,  to  an  anchor,  is  by  mooring  her  to  one  of  these 
mushroom  anchors.      That  is  the  description  of  anchor  for  a  hold-fast  to  the 
ship.      The  analogy  between  the  case  of  the  mushroom  anchor  and  of  the 
adze  anchor,  is  so  close  to  that  of  the  present  anchor,  that  it  does  not  appear 
to  me  that  this  discovery  can  be  considered  so  far  new,  as  to  be  the  proper 
ground  of  a  patent,  in  reality  it  is  nothing  more  than  making  in  one  piece, 
what  before  was  made  in  two,  and  introducing  into  this  kind  of  anchor,  the 
shank,  in    the  way  a  handle  is   introduced    into   a  hammer  or   pickaxe." 
Best  J.  said,  "  Then  as  to  the  anchor,  the  invention  claimed  is,  that  he  avoids 


NOVELTY    AND    UTILITY.  13 

sisted  in  spinning  with  a  much  less  distance  between  the  re- 

the  welding;    but  that  certainly  is  not  new,  because  that  has  been  done 
before  in  the  case  of  the  mushroom  and  adze  anchor,  the  pickaxe  and  the  com- 
mon hammer.     It  is  said,  however,  that  his  invention  consists  in  the  appli- 
cation of  that  which  was  known  before,  to  a  new  subject-matter :  viz.,  that 
he  had,  for  the  first  time,  applied  to  the  manufacturing  of  anchors  a  mode  in 
which  welding  was  avoided,  which,  however,  had  been  long  practised,  in 
other  instances  to  wliich  I  have  before  alluded  ;  but  he  does  not  state  as  the 
ground  upon  which  he  had  applied  for  his  patent,  nor  state  in  the  specification 
that  it  being  known  that  the  process  of  welding  vi'eakens  the  anchor,  he  had 
first  applied  to  an  anchor,  a  mode  long  practised  in  the  manufiicture  of  other 
instruments,  viz.,  of  making  the  two  flukes  of  one  piece  instead  of  two.     If 
he  had  so  described  his  process,  the  question  would  then  arise  whether  that 
would  have  been  a  good  ground  for  a  patent.     I  incline  to  think  however, 
that  it  having  been  long  known  that  welding  may  be  avoided  in  instruments 
of  a  similar  form,  the  application  of  that  practice  for  the  first  time  to  a  ship's 
anchor,  cannot  be  considered  a  new  invention,  and  therefore  that  it  is  not  the 
ground  of  a  patent."     Mr,  Webster  remarks  upon  this  case,  "The  judges 
were  unanimous  in  their  opinion  that  the  patent,  in  respect  of  the  improve- 
ments in  the  anchor,  could  not  be  supported  ;  that  the  application  of  a  mode 
well  known,  and  generally  used  in  several  of  a  class  of  cases,  to  one  partic- 
ular case  of  that  class,  did  not  constitute  some  manner  of  new  manufacture, 
within  the  meaning  of  the  statute.     If  the  sufiiciency  be  judged  of,  only  from 
the  invention  which  the  results  themselves,  the  cable  and  the  anchor  exhibit, 
the  substitution  of  a  conical  end   to  the  shaft,  and  of  a  conical   hole  in  the 
piece  constituting  the  two  arms,  whereby  the  pieces  were  supposed  to  be 
more  securely  united,  is  as  great  a  change  as  the  substitution  of  a  broad- 
headed  for  a  pointed  stay  across  the  link.      And  yet  there  can  be  no  doubt 
that  the  invention  in  the  cable,  was  of  a  much  higher  order  than  in  the  an- 
chor.    The  improvement  in  the  cable,  was  the  carrying  out  into  practice,  cer- 
tain important  principles  respecting  the  action  of  forces,  by  the  substitution  of  a 
broad  headed  for  the  pointed  stay,  in  a  link  of  a  particular  form.  The  improve- 
ment in  the  anchor,  was  the  avoiding  the  welding,  by  means  well  known,  and 
practised  in  cases  extremely  similar.     There  was  originality  of  idea  in  the 
application  of  the  broad-headed  stay,  as  subsidiary  to  the  principles  for  the 
improvement  of  the  chain  cable,  as  laid  down  in  the  specification,  but  there 
was  no  originality  of  idea  or  of  method,  in  avoiding  the  welding,  this  being 
borrowed  from  cases  which  would  obviously  and  immediately  present  them- 
selves. 

It  should  also  be  remarked,  with  the  view  of  pointing  out  whatever  may 
have  contributed  to  the  subtle  distinctions  which  were  drawn  in  this  case, 
that  evidence  of  the  great  superiority  of  the  cable  was  given  at  the  trial,  but 

S 


14  LAW    OF    PATENTS. 

tainin^  and  drawing  rollers,  than  had  been  before  practised,  the 
court  lield  that  spinning  at  a  particular  distance  did  not  consti- 
tute a  new  manufacture,  it  having  been  the  previous  practice  to 
spin  at  variable  distances.* 

>§,  14.  It  appears  then,  according  to  the  English  authorities,  that 
the  amount  of  invention  may  be  estimated  from  the  result,  al- 
though not  capable  of  being  directly  estimated  on  a  view  of  the 
invention  itself.- 

<§.  15.  The  utility  of  the  change  is  the  test  to  be  applied  for  this 
purpose.  As  there  cannot  be  a  decidedly  useful  new  result, 
without  some  degree  of  invention  in  producing  the  change 
which  effects  that  result,  when  a  real  utility  is  seen  to  exist,  a 
sufficiency  of  invention  may  be  presumed.     And  it  is  said,  that 


nothing  appears  to  have  been  said  respecting  the  anchor.     And  this  has  been 
confirmed  by  the  result,  for  the  cable  is  in  constant  and  general  use,  but  anchors 
are  made  as  before  the  patent."    Webster  on  the  Subject-Matter,  &c.  p.  34. 
'  Kay  V.  Marshall,  Webs.  Pat.  Cas.  1  M.  &  Cr.  373. 
*  Mr.  Webster  thus  sums  up  the  general  doctrine:  "  But  though  the 
amount  of  invention,  and  the  consequeut  sufficiency  of  a  change  to  support  a 
patent,  cannot  be  directly  estimated  cr  ascertained,  they  may  be  estimated 
and  ascertained  from  the  result ;  and  with  this  view^,  two  things  have  to  be 
considered,  namely,  the  nature  of  the  change,  and  its  consequences.     The 
change  may  be  considerable,  that  is,  may  of  itself  exhibit  traces  of  thought, 
skill  and  design  ;  the  consequences  produced  thereby  may  be  important  and 
considerable,  or  unimportant  and  inconsiderable;  in  the  former  case,  both 
the  means  and  the  result  will  be  new,  and  there  will  be  a  sufficiency  of 
invention.  These  four  cases,  the  only  cases  which  can  occur,  are  all  included 
in  the  following  general  proposition  and  practical  test,  that  whenever  the 
change  and  its  consequences  taken  together,  and  viewed  as  a  sum,  are  con- 
siderable, there  must  be  a  sufficiency  of  invention  to  support  a  patent.    Thus, 
when  the  change,  however  minute,  leads  to  consequences  and  results  of  the 
greatest  practical  utility,  as  in  the  case  of  Dudley's,  Crane's,  Hall's,  and 
Danieirs  patents,  the  above  condition  is  satisfied  ;  but  if  the  consequence,  as 
in  the  case  of  Fussell's  patent,  be  inconsiderable,  the  change  also  being 
inconsiderable,  and  such  as  would  most  readily  suggest  itself  to  any  one,  the 
condition  is  not  fulfilled,  and  the  invention  is  not  sufficient  to  support  a 
patent."    Webster  on  the  Subject-Matter,  &c.  p.  29,  30. 


NOVELTY    AND    UTILITY.  15 

whenever  utility  is  proved  to  exist  in  a  very  great  degree,  a 
sufficiency  of  invention  to  support  a  patent  must  be  presumed. ' 

>^  16.  The  question  now  recurs,  whether  the  same  general  doc- 
trine as  to  the  sufficiency  of  an  invention  to  support  a  patent  be 
not  applicable  under  our  law.  Our  statute  requires  that  the  subject 
of  a  patent  should  be  "  new  and  useful."  The  word  "  useful  " 
is  not  supposed  to  be  used,  for  the  purpose  of  establishing 
general  utility  as  the  test  of  a  sufficiency  of  invention  to  sup- 
port a  patent.  It  had  been  held,  upon  the  use  of  the  same 
word  in  the  same  connection  in  the  old  patent  act  of  1793,  that 
it  was  used  merely  in  contradistinction  to  what  is  frivolous  or 
mischievous  to  society.  This  term  was  held  to  be  satisfied,  if 
the  alleged  invention  was  capable  of  use,  and, was  not  injurious 
to  the  well-being,  good  policy  or  sound  morals  of  society.^ 

«§.  17.  But  the  subject  of  a  patent  must  not  only  be  "  useful,"  in 
this  sense,  that  is,  capable  of  use  and  not  mischievous,  but  it 
must  also  be  a  "  new  "  art,  machine,  manufacture,  or  composi- 
tion of  matter,  or  "a  new  improvement"  upon  one  of  these 
things,  "  discovered  or  invented  "  by  the  patentee,  and  "  not 
known  or  used  by  others"  before.  It  is  obvious,  therefore, 
that  the  subject-matter  of  a  patent  must  be  something  sub- 
stantially different  from  anything  that  has  been  known  or  used 
before  ;  and  this  substantial  difference,  in  all  cases  where 
analogous  or  similar  things  have  been  previously  known  or 
used,  must  be  the  measure  of  a  sufficiency  of  invention  to  sup- 
port the  particular  patent.^ 


'  Webster  oo  the  Subject-Matter,  &c.  p.  30;  Webster's  Pat.  Cas.  p.  71, 
note  (e.) 

2  Lowell  V.  Lewis,  1  Mas.  186  ;  Bedford  r.  Hunt,  Ibid.  303  ;  Kneass  v. 
Schuylkill  Bank,  4  Wash.  9,  12. 

3  Mr.  Phillips  has  pointed  out  the  provision  in  the  act  of  1793,  "that  sim- 
ply changing  the  form  or  the  proportions  of  any  machine  or  composition  of 
matter  in  any  degree,  shall  not  ^e  deemed  a  discovery  ;"  and  he  remarks 
that  this  construction  would  undoubtedly  have  been  put  upon  the  law  with- 


IQ  LAW    OF    PATENTS. 

^  18.  Our  courts  have,  in  truth,  without  using  the  same  terms, 
apphcd  the  same  tests  of  the  sufficiency  of  invention,  which  the 
Enghsh  authorities  exhibit,  in  determining  whether  alleged  in- 
ventions of  various  kinds  possess  the  necessary  element  of 
novelty.  That  is  to  say,  in  determining  this  question,  the 
character  of  the  result,  and  not  the  apparent  amount  of  skill, 
in<^enuity  or  thought  exercised,  has  been  examined  ;  and  if  the 
result  has  been  substantially  different  from  what  had  been 
effected  before,  the  invention  has  been  pronounced  entitled  to 
a  patent ;  otherwise,  the  patent  has  failed.* 

^  19.  Thus,  where  the  patent  was  for  an  improvement  in  co}}- 
perplate  printing  of  bank  notes,  by  printing  copperplate  on  both 
sides  of  the  note,  or  copperplate  on  one  side,  and  letter-press 
on  the  other,  or  letter-press  on  both  sides,  as  an  additional 
security  against  counterfeiting  ;  and  the  defendants  had  used 
steel  plate  printing ;  the  question  was,  whether  "  copperplate 
printing "  included  "  steel  plate  printing."  The  plaintiff's 
counsel  contended,  that  even  if  copperplate  did  not  include 
steel  plate  printing,  still  the  use  of  the  latter  by  the  defendants, 
applied  to  bank  notes,  to  produce  the  effect  stated  in  the 
patent,  was  a  mere  invasion  and  virtually  an  infringement. 
Washington  J.  instructed  the  jury,  that  if  the  use  of  steel 
plates  was  an  improvement  upon  printing  from  copperplates, 
for  which  a  patent  might  have  been  obtained  by  the  inventor, 
the  use  of  steel  plates  by  the  defendants  could  with  no  pro- 
priety be  considered  as  an  infringement  of  the  plaintiff's  right, 
unless  it  appeared  that  they  had  also  used  the  plaintiff's  im- 
provement.* 

out  any  such  express  exception.  He  gives  the  same  place  in  our  law  to  the 
doctrine  of  sufficiency  of  invention,  that  it  occupies  in  the  English  law.  See 
Phillips  on  Patents,  125,  126,  127. 

'  The  application  of  these  tests  is  most  frequently  found  in  cases,  not 
where  insufficiency  of  invention  has  been  expressly  the  ground  of  defence, 
but  where  the  question  has  been  whether  the  patent  did  not  claim  something 
that  was  not  new. 

*  Kneass  r.  The  Schuylkill  Bank,  4  Wash.  9,  11, 


NOVELTY    AND     UTILITY.  17 

<§.  20.  This  is  in  substance  the  test  apphed  by  Mr.  Justice  Dul- 
ler, of  "  anything  material  and  new,  that  is  an  improvement  of 
the  trade."  '  If  the  process  of  printing  by  steel  plates  was  an 
improvement  in  the  manufacture  of  notes,  upon  the  process  of 
printing  by  copperplates,  so  as  to  be  a  benefit  to  the  trade  of 
manufacturing  notes,  it  would  have  been  a  substantive  inven- 
tion, and  therefore  not  an  infringement  upon  the  plaintiff's  pa- 
tent, if  standing  alone. 

«§.  21.  So  too,  upon  the  clause  in  the  former  statute,  ''  that  sim- 
ply changing  the  form  or  proportion  of  any  machine,  shall  not  be 
deemed  a  discovery,''  Mr.  Chief  Justice  Marshall,  held  that  the 
word  "  simply "  was  of  great  importance ;  that  it  was  not 
every  change  of  form  or  proportion  which  was  declared  to  be 
no  discovery,  but  that  which  was  simply  a  change  of  form  or 
proportion,  and  nothing  more.  If  by  changing  the  form  and 
proportion,  a  new  effect  is  produced,  there  is  not  sin)ply  a 
change  of  form  and  proportion,  but  a  change  of  principle  also. 
The  question  will  be  therefore  whether  the  change  has  pro- 
duced a  different  effect.* 

*§>  22.  In  like  manner,  Mr.  Justice  Livingston  decided  that  a  pa- 
tent was  invalid,  upon  substantially  the  same  test  as  that  of  Mr. 
Justice  Buller.  The  patent  was  for  an  alleged  invention  in 
folding  and  putting  up  thread  and  floss  cotton,  in  a  manner 
different  from  the  ordinary  mode,  so  that  it  would  sell  quicker 
and  for  a  higher  price,  than  the  same  cotton  put  up  in  the  com- 
mon vvay.  The  article  itself  was  imported  and  underwent  no 
change.  The  whole  of  the  improvement  consisted  in  putting 
up  the  skeins  or  hanks  in  a  convenient  quantity  for  retailing, 
with  a  sealed  wrapper,  and  a  label  containing  the  number  and 
description  of  the  article.     The  court  declared  that  the  inven- 


'  Cited  ante,  ^  9. 

'  Davis  V.  Palmer,  2  Brock.  29S,  310.     See  also  Pettibone  v.  Derringer, 
4  Wash.  218,  219. 

2* 


18  LAW    OF     PATENTS. 

tion,  upon  the  patentee's  own  showing,  was  frivolous ;  that  it 
was  in  no  way  beneficial  to  the  public,  not  making  the  article 
itself  any  belter,  or  altering  its  quality  in  any  way.  In  other 
words,  it  was  no  "  improvement  of  the  trade  "  of  making  the  ar- 
ticle sold,  but  it  was  a  mere  improvement  in  the  art  of  selling  it, 
by  wliich  the  retailer  could  get  a  higher  price  for  the  same  ar- 
ticle than  could  be  obtained  by  putting  it  up  without  the 
Iabel.i 


'  Langdon  v.  DeGroot,  1  Paine's  C.  C.  R.  203.  The  learned  judge  said, 
"  The  invention  is  for  folding  the  thread  and  floss  cotton  in  a  manner  a  little 
different  from  the  ordinary  mode,  in  which  form  the  cotton  will  sell  quicker 
and  higher  by  twenty-five  per  cent,  than  the  same  cotton  put  up  in  the  com- 
mon way.  The  cotton  thus  folded  is  imported  from  the  factory  of  Holt,  in 
England.  The  article  itself  undergoes  no  change  ;  and  the  whole  of  the  im- 
provement, for  it  is  a  patent  for  an  improvement,  consists  in  putting  up  skeins 
of  it,  perhaps  of  the  same  size  in  which  they  are  imported,  decorated  with  a 
label  and  wrapper ;  thus  rendering  their  appearance  somewhat  more  attract- 
ive, and  inducing  the  unwary,  not  only  to  give  it  a  preference  to  other  cotton 
of  the  same  fabric,  quality,  and  texture,  but  to  pay  an  extravagant  premium 
for  it.  When  stripped  of  these  appendages,  which  must  be  done  before  it  is 
used,  the  cotton  is  no  better  in  any  one  respect  than  that  of  Holt's  retailed  in 
the  way  put  up  by  him.    All  this  came  out  on  the  plaintiff's  own  testimony. 

Now,  that  such  a  contrivance  —  for  with  what  propriety  can  it  be  termed 
an  useful  art  within  the  meaning  of  the  constitution  ?  —  may  be  beneficial  to 
a  patentee,  if  he  can  exclude  from  the  market  all  other  retailers  of  the  very 
same  article,  will  not  be  denied  ;  and  if  to  protect  the  interest  of  a  patentee, 
however  frivolous,  useless  or  deceptive  his  invention  may  be,  were  the  sole 
object  of  the  law,  it  must  be  admitted  that  the  plaintiff  has  made  out  a  satis- 
factory title  to  his  patent. 

But  if  the  utility  of  an  invention  is  also  to  be  tested  by  the  advantages 
which  the  public  are  to  derive  from  it,  it  is  not  perceived  how  this  part  of  his 
title  is  in  any  way  whatever  established.  So  the  cotton  manufactured  by 
himself,  which  is  put  up  in  this  way.  The  very  label  declares  it  to  be  that 
of  another  man.  So  anything  done  to  alter  its  texture  or  to  render  it  more 
portable,  or  more  convenient  for  use.  Nothing  of  this  kind  is  pretended. 
Does  the  consumer  get  it  for  less  than  in  its  imported  condition  ■?  The  only 
ground  on  which  the  expectation  of  a  recovery  is  built  is,  that  he  pays  an 
enormous  additional  price,  for  which  he  literally  receives  no  consideration. 

It  is  said  that  many  ornamental  things  are  bought  of  no  intrinsic  value,  to 
f,ralify  the  whim,  taste  or  extravagance  of  a  purchaser,  and  that  for  many  of 


NOVELTY    AND     UTILITY.  19 

<^  23.  So,  too,  where  the  question  was  whether,  in  a  patent  for  a 
machine  for  making  wool  cards,  the  patentee  had  not  claimed 
what  had  been  substantially  done  before,  his  claim  being  for  the 
whole  machine,  which  comprehended  several  distinct  operations 
or  stages  in  the  manufacture ;  Mr.  Justice  Story  said  the  ques- 
tion was,  whether  either  of  these  effects  had  been  produced  in 
the  machines  formerly  in  use  by  a  combination  of  machinery  or 
mode  of  operation  substantially  the  same  as  in  the  machine  of 
the  patentee.  That  it  would  not  be  sufficient  to  protect  the 
plaintiff's  patent  —  it  being  for  the  whole  machine  —  that  his 
specific  machine,  with  all  its  various  combinations  and  effects, 
did  not  exist  before  ;  because,  if  the  different  effects  embraced 
in  it  were  all  produced  by  the  same  application  of  machinery,  in 
separate  parts,  and  he  merely  combined  them,  or  added  a  new 
effect,  such  combination  would  not  sustain  his  patent  for  the 
whole  machine ; '  that  is  to  say,  without  looking  at  the  appa- 

these  articles  patents  are  obtained.  This  may  be  so  ;  but  in  such  cases  there 
is  no  deception,  no  false  appearances  ;  and  the  article  is  bought  to  be  used 
with  all  its  decorations  and  ornaments  which  may  have  been  the  principal 
inducements  to  the  purchase,  and  which  will  last  as  long  as  the  article  itself. 
In  this  the  sight  or  pride  of  the  party  is  gratified.  But  here  it  is  the  cotton 
alone  which  it  is  intended  to  buy,  and  the  little  label  and  wrapper  appended 
to  it,  and  which  constitute  the  whole  of  the  improvement,  however  showy, 
are  stripped  off  and  thrown  away  before  it  can  be  used.  And  when  that  is 
done,  which  may  be  at  the  very  moment  of  its  purchase,  the  cotton  is  no 
better,  whatever  the  buyer  at  the  time  may  think,  than  when  it  first  left  the 
factory. 

When  Congress  shall  pass  a  law,  if  they  have  a  right  so  to  do,  to  encourage 
discoveries,  by  which  an  article,  without  any  amelioration  of  it,  may  be  put 
off  for  a  great  deal  more  than  it  is  worth  and  is  actually  selling  for,  it  will  be 
time  enough  for  courts  to  extend  their  protection  to  such  inventions,  among 
which  this  may  be  very  fairly  classed." 

'  Whittemore  v.  Cutter,  1  Gallis.  478.  In  this  case,  the  learned  judge 
said,  "  It  is  difiicult  to  define  the  exact  cases,  when  the  whole  machine  may 
be  deemed  a  new  invention,  and  when  only  an  improvement  of  an  old  ma- 
chine ;  the  cases  often  approach  very  near  to  each  other.  In  the  present 
improved  state  of  machinery,  it  is  almost  impracticable  not  to  employ  the 
same  elements  of  motion,  and  in  some  particulars,  the  same  manner  of  opera- 
tion, to  produce  any  new  effect.    Wheels,  with  their  known  modes  of  opera- 


20  LAW    OF     PATENTS. 

rent  amount  of  skill  or  invention  involved  in  hinging  these  sev- 


tion,  and  known  combinations,  must  be  of  very  extensive  employment  in  a 
great  variety  of  new  machines  ;  and  if  they  could  not,  in  the  new  invention, 
be  included  in  the  patent,  no  patent  could  exist  for  a  whole  machine  embrac- 
ing such  mechanical  powers. 

Where  a  specific  machine  already  exists,  producing  certain  effects,  if  a 
mere  addition  is  made  to  such  machine,  to  ■produce  the  same  effects  in  a  better 
manner,  a  patent  cannot  be  taken  for  the  whole  machine,  but  for  the  improve- 
ment only.  The  case  of  a  watch  is  a  familiar  instance.  The  inventor  of  the 
patent  lever,  without  doubt,  added  a  very  useful  improvement  to  it ;  but  his 
ri'^ht  to  a  patent  could  not  be  more  extensive  than  his  invention.  The  patent 
could  not  cover  the  whole  machine  as  improved,  but  barely  the  actual 
improvement.  The  same  illustration  might  be  drawn  from  the  steam  engine, 
so  much  improved  by  Messrs.  Watt  and  Boulton.  In  like  manner,  if  to  an 
old  machine  some  new  combinations  be  added,  to  produce  new  effects,  the 
rit^ht  to  a  patent  is  limited  to  the  new  combinations.  A  patent  can  in  no 
case  be  for  an  effect  only,  but  for  an  effect  produced  by  a  given  manner,  or 
by  a  peculiar  operation.  For  instance,  no  patent  can  be  obtained  for  the 
admeasurement  of  time,  or  the  expansive  operations  of  steam ;  but  only  for 
a  new  mode  or  new  application  of  machinery  to  produce  these  effects;  and 
therefore,  if  new  effects  are  produced  by  an  old  machine  in  its  unaltered 
state,  I  apprehend  that  no  patent  can  be  legally  supported,  for  it  is  a  patent 
for  an  effect  only. 

On  the  other  hand,  if  well  known  effects  are  produced  by  machinery  in  all 
its  combinations  entirely  neio,  a  patent  may  be  claimed  for  the  whole  ma- 
chine. So,  if  the  principles  of  the  machine  are  new,  either  to  produce  a  new 
or  an  old  effect,  the  inventor  may  well  entitle  himself  to  the  exclusive  right 
of  the  whole  machine.  By  the  principles  of  a  machine,  (as  these  words  are 
used  in  the  statute)  is  not  meant  the  original  elementary  principles  of  motion, 
which  philosophy  and  science  have  discovered,  but  the  modus  operandi,  the 
peculiar  device  or  manner  of  producing  any  given  effect.  The  expansive 
powers  of  steam,  and  the  mechanical  powers  of  wheels,  have  been  under- 
stood for  many  ages  ;  yet  a  machine  may  well  employ  either  the  one  or  the 
other,  and  yet  be  so  entirely  new,  in  its  mode  of  applying  these  elements,  as 
to  entitle  the  party  to  a  patent  for  his  whole  combination.  The  intrinsic 
difficulty  is  to  ascertain,  in  complicated  cases  like  the  present,  the  exact 
boundaries  between  what  was  known  and  used  before,  and  what  is  new,  in 
the  mode  of  operation. 

The  present  machine  is  to  make  cotton  and  woollen  cards.  These  were 
not  only  made  before  the  present  patent,  by  machinery,  but  also  by  ma- 
chinery which,  at  different  times,  exhibited  very  different  stages  of  improve- 
ment.    The  gradual  progress  of  the  invention,  from  the  first  rude  attempts 


NOVELTY    AND     UTILITY. 


21 


eral  modes  of  operation  into  one  machine,  which  was  not  the 
invention  claimed,  if  the  result  accomplished  thereby  did  not 
differ  substantially,  in  respect  to  the  processes  embraced  in  it, 
from  what  had  been  done  before  in  separate  machines,  the  sub- 
ject-matter claimed  as  the  invention  was  not  new. 

<§)  24.  On  the  other  hand,  where  the  patent  claimed,  as  the  in- 
vention of  the  party,  a  new  and  useful  improvement  in  the  making 
of  friction  matches,  by  means  of  a  new  compound,  and  it  was  said 
that  the  ingredients  had  been  used  before  in  the  making  of 
matches,  the  court  said  that  the  true  question  was,  whether  the 
materials  had  been  used  before  in  the  same  combination,  and  if 

to  the  present  extraordinary  perfection,  from  the  slight  combination  of  simple 
principles  to  the  present  wonderful  combinations,  in  ingenuity  and  intricacy 
scarcely  surpassed  in  the  world,  has  been  minutely  traced  by  the  witnesses 
on  the  stand. 

The  jury,  then,  are  to  decide  whether  the  principles  of  Mr.  Whittemore's 
machine  are  altogether  new,  or  whether  his  machine  be  an  improvement  only 
on  those  which  have  been  in  use  before  his  invention.  I  have  before  observed 
that  the  principles  are  the  mode  of  operation.  If  the  same  effects  are  pro- 
duced by  two  machines  by  the  same  mode  of  operation,  the  principles  of 
each  are  the  same.  If  the  same  effects  are  produced  but  by  a  combination 
of  machinery  operating  substantially  in  a  different  manner,  the  principles  are 
different. 

The  great  stages,  (if  I  may  so  say)  in  making  the  cards  by  Whittemore's 
machine,  which  admit  of  a  separate  and  distinct  operation  in  the  machinery, 
are,  1.  The  forming  and  bending  the  wire.  2.  The  pricking  the  leather. 
3.  The  sticking  the  wire  into  the  leather  ;  and,  4.  The  crooking  the  wire 
after  its  insertion.  Were  either  of  these  effects  produced  in  the  machines 
formerly  in  use  by  a  combination  of  machinery,  or  mode  of  operation,  sub- 
stantially the  same  as  in  this  machine  ?  If  so,  then  clearly  his  patent  could 
only  be  for  an  improvement,  and  of  course  it  is  void  ;  if  not,  then  his  patent 
is  free  from  any  objection  on  the  ground  of  being  broader  than  his  invention. 
It  will  not  be  sufficient,  to  protect  the  plaintiff's  patent,  that  this  specific 
machine,  with  all  its  various  combinations  and  effects,  did  not  exist  before  ; 
for  if  the  different  effects  were  all  produced  by  the  same  application  of  ma- 
chinery, in  separate  parts,  and  he  merely  combined  them  together,  or  added 
a  new  effect,  such  combination  would  not  sustain  the  present  patent,  any 
more  than  the  artist,  who  added  the  second  hand  or  repeater  to  a  watch, 
could  have  been  entitled  to  a  patent  of  the  whole  watch." 


22  LAW    OF     PATENTS. 

not,  that  the  combination  was  patentable,  however  apparently 
simple  it  might  be.  That  is  to  say,  if  the  result  at  which  the 
inventor  had  arrived,  the  production  of  a  friction  match  by  a 
particular  combination  of  materials,  was  new,  there  was  a  suffi- 
ciency of  invention,  without  looking  at  the  apparent  facility  or 
difficulty  of  accomplishing  it.' 

<§>  25.  So,  too,  where  it  was  said.  In  the  defence,  that  a  machine 
for  cutting  ice  was  but  an  application  of  an  old  invention  to  a  new 
purpose,  it  being  likened  to  the  common  carpenter's  plough,  the 
court  distinguished  the  machine  from  everything  that  had  been 
made  before,  by  pointing  out  that  such  a  conbination  of  appara- 
tus had  not  been  known  before.' 


'  Ryan  v.  Goodwin,  3  Sumner's  R.  514,  518.  In  this  case,  Mr.  Justice 
Story  said,  "It  is  certainly  not  necessary  that  every  ingredient  or,  indeed, 
that  any  one  ingredient  used  by  the  patentee  in  his  invention,  should  he 
new  or  unused  before  for  the  purpose  of  making  matches.  The  true  question 
is,  whether  the  combination  of  materials  by  the  patentee  is  substantially 
new.  Each  of  these  ingredients  may  have  been  in  the  most  extensive  and 
common  use,  and  some  of  them  may  have  been  used  for  matches,  or 
combined  with  other  materials  for  other  purposes.  But  if  they  have  never 
been  combined  together  in  the  manner  slated  in  the  patent,  but  the  com- 
bination is  new,  then,  I  take  it,  the  invention  of  the  combination  is  patent- 
able. So  far  as  the  evidence  goes,  it  does  not  appear  to  me  that  any 
such  combination  was  known,  or  in  use  before  Phillips's  invention.  But 
this  is  a  matter  of  fact,  upon  which  the  jury  will  judge.  The  combination  is 
apparently  very  simple  ;  hut  the  simplicity  of  an  invention,  so  far  from  being 
an  objection  to  it,  may  constitute  its  great  excellence  and  value.  Indeed,  to 
produce  a  great  result  by  very  simple  means,  before  unknown  or  unthought 
of,  is  not  unfrequently  the  peculiar  characteristic  of  the  very  highest  class  of 
minds." 

'  Wyeth  V.  Stone,  1  Story's  R.  273,  279.  In  this  case  Mr.  Justice  Story 
said,  "  Assuming  the  patent  to  be  for  the  machinery  described  in  the  specifi- 
cation, and  the  description  of  the  invention  in  the  specification  to  be,  in  point 
of  law,  certainly  and  correctly  summed  up,  (points  which  will  be  hereafter 
considered.)  I  am  of  opinion  that  the  invention  is  substantially  new.  No 
such  machinery  is,  in  my  judgment,  established,  by  the  evidence,  to  have 
been  known  or  used  before.  The  argument  is,  that  the  principal  machine, 
described  as  the  cutter,  is  well  known,  and  has  been  often  used  before  for 


NOVELTY    AND    UTILITY.  23 

«§.  26.  But  where  an  invention  was  claimed  to  be  a  mode  by 
which  the  back  of  a  rocking-chair  could  be  reclined  and  fixed  at 
any  angle  required,  by  means  of  a  certain  apparatus,  the  patent  was 
declared  void,  because  the  same  apparatus  or  machinery  had 
been  long  in  use,  and  applied,  if  not  to  chairs,  at  least  in  other 
machines,  to  purposes  of  a  similar  nature.'  An  examination  of 
the  result  attained  by  the  plaintiff  showed  that  he  had  accom- 
plished nothing  which  had  not  been  done  before,  but  had  merely 
applied  an  old  contrivance  to  a  new  purpose. 

<§.  27.  This  last  case  furnishes  a  clear  line  of  demarkation  be- 
tween invention  and  a  mere  application  to  a  new  use.  It  shows  that 
the  end,  eflfect  or  result  attained  must  be  new  ;  and  that  if  the 
same  end,  effect  or  result  has  been  attained  before,  it  is  not 
new,  and  there  has  been  no  invention,  but  merely  an  applica- 
tion of  means  before  known  to  produce  an  effect  before  known, 
on  a  new  occasion.  The  purpose  itself,  which  is  to  be  ac- 
complished, is  not  patentable  ;  but  the  adaptation  of  materials 
to  the  execution  of  the  purpose,  or  the  apparatus  by  which  the 
purpose  is  accomplished,  is  the  true  subject  of  the  patent :  and 
if  the  same  purpose  has  in  other  instances  been  accomplished 
by  the  same  means,  the  use  of  those  means  on  a  new  occasion 


other  purposes,  and  that  this  is  but  an  application  of  an  old  invention  to  a 
new  purpose;  and  it  is  not,  therefore,  patentable.  It  is  said  that  it  is,  in 
substance,  identical  with  the  common  carpenter's  plough.  I  do  not  think  so. 
In  the  common  carpenter's  plough  there  is  no  series  of  chisels  fixed  in  one 
plane,  and  the  guide  is  below  the  level,  and  the  plough  is  a  movable  chisel. 
In  the  present  machine,  there  are  a  series  of  chisels,  and  they  are  all  fixed. 
The  successive  chisels  are  each  below  the  other,  and  this  is  essential  to  their 
operation.  Such  a  combination  is  not  shown  ever  to  have  been  known  or 
used  before.  It  is  not,  therefore,  a  new  use  or  application  of  an  old  machine. 
This  opinion  does  not  rest  upon  my  own  skill  and  comparison  of  the  ma- 
chine with  the  carpenter's  plough ;  but  it  is  fortified  and  sustained  by  the 
testimony  of  witnesses  of  great  skill,  experience,  and  knowledge  in  this  de- 
partment of  science." 

*  Bean  v.  Smallwood,  2  Story's  R.  408,  410. 


24  LAW    OF    PATENTS. 

does  not  constitute  a  sufficiency  of  invention.     In  other  words, 
the  machinery,  apparatus,  or  other  means,  is  not  new.' 


'  In  the  case  last  cited   (Bean  v.  Smallwood)   Mr.  Justice  Story  said, 
"The  third  and  last  specification  of  claim,  upon  the  testimony  of  Mr.  Eddy, 
which  is  admitted  to  be  true,  is  equally  unsupportable.     He  says,  that  the 
same  apparatus,  stated  in  this  last  claim,  has  been  long  in  use,  and  applied, 
if  not  to  chairs,  at  least  in  other  machines,  to  purposes  of  a  similar  nature. 
If  this  be  so,  then  the  invention  is  not  new,  but  at  most  is  an  old  invention, 
or  apparatus,  or  machinery  applied  to  a  new  purpose.     Now,  I  take  it  to  be 
clear,  that  a  machine,  or  apparatus,  or  other  mechanical  contrivance,  in  order 
to  give  the  party  a  claim  to  a  patent  therefor,  must  in  itself  be  substantially 
new.    If  it  is  old  and  well  known,  and  applied  only  to  a  new  purpose,  that 
does  not  make  it  patentable.     A  coffee-mill  applied  for  the  first  time  to  grind 
oats,  or  corn,  or  mustard,  would  not  give  a  title  to  a  patent  for  the  machine. 
A  cotton  gin,  applied  without  alteration  to  clean  hemp,  would  not  give  a  title 
to  a  patent  for  the  gin  as  new.     A  loom  to  weave  cotton  yarn,  would  not, 
if  unaltered,  become  a  patentable  machine  as  a  new  invention  by  first  applying 
it  to  weave  woollen  yarn.     A  steam  engine,  if  ordinarily  applied  to  turn  a 
grist  mill,  would  not  entitle  a  party  to  a  patent  for  it,  if  it  were  first  applied 
by  him  to  turn  the  main  wheel  of  a  cotton  factory.     In  short,  the  machine 
must  be  new,  not  merely  the  purpose  to  which  it  is  applied.     A  purpose  is 
not  patentable  ;  but  the  machinery  only,  if  new,  by  which  it  is  to  be  accom- 
plished. In  other  words,  the  thing  itself  which  is  patented  must  be  new,  and  not 
the  mere  application  of  it  to  a  new  purpose  or  object."  In  Huddart  v.  Grirashaw, 
Webster's  Pat.  Cas.  86,  Lord  Ellenborough  said,  "In  inventions  of  this  sort, 
and  every  other  through  the  medium  of  mechanism,  there  are  some  materials 
which  are  common,  and  cannot  be  supposed  to  be  appropriated  in  the  terms 
of  any  patent.     There  are  common  elementary  materials  to  work  with  in 
machinery,  but  it  is  the  adoption  of  these  materials  to  any  particular  purpose 
that  constitutes  the  invention;  and  if  the  application  of  them  be  new,  if  the 
combination  in  its  nature  be  essentially  new,  if  it  be  productive  of  a  new  end 
and  beneficial  to  the  public,  it  is  that  species  of  invention  which,  protected 
by  the  King's  patent,  ought  to  continue  to  the  person  the  sole  right  of  vend- 
ing ;  but  if,  prior  to  the  time  of  his  obtaining  a  patent,  any  part  of  that  wliich 
is  of  the  substance  of  the  invention,  has  been  communicated  to  the  public,  in 
the  shape  of  a  specification  of  any  other  patent,  or  is  a  part  of  the  service  of 
the  country,  so  as  to  be  a  known  thing,  in  that  case  he  cannot  claim  the 
benefit  of  his  patent."    See  also  Hoveyu.  Stevens,  1  Woodbury  and  Minot's 
R.,  290,  297,  298,  299,  where  Mr.   Justice  Woodbury  held  it  doubtful, 
whether  a  change  by  merely  attaching  several  knives  to  a  cylinder,  to  be 
ground,  instead  of  attaching  but  one,  without  any  difference  being  shown  in' 


NOVELTY     AND     UTILITY.  25 

*§>  23.  The  doctrine  in  relation  to  utility,  being,  in  this 
country,  that  the  subject-matter  of  a  patent  must  not  be  injuri- 
ous or  mischievous  to  society,  or  frivolous  or  insignificant :  it 
follows  that  every  invention,  for  which  a  patent  is  claimed, 
must  be,  to  a  certain  extent,  beneficial  to  the  community ;  it 
must  be  capable  of  use,  for  some  beneficial  purpose  ;  but  when 
this  is  the  case,  the  degree  of  utility,  whether  larger  or  smaller, 
is  not  a  subject  for  consideration,  in  determining  whether  the 
invention  will  support  a  patent.'  But  it  is  obvious  that  the 
capability  of  use  for  some  beneficial  purpose  is  a  material  ele- 
ment, in  determining  whether  there  is  a  sufficiency  of  invention 
to  support  a  patent;  the  force  of  the  word  -'useful,"  intro- 
duced into  the  statute  in  connection  with  the  epithet  "  new," 
being  to  determine  v.-hether  the  subject-matter,  upon  the 
whole,  is  capable  of  use,  for  a  purpose  from  which  any  advan- 
tage can  be  derived  to  the  public.  General  rules  will  not 
decide  this  question  in  particular  cases,  but  the  circumstances 
of  each  case  must  be  carefully  examined,  under  the  light  of  the 
principles  on  which  general  rules  are  founded. 

<§,  29.  In  considering  the  question  of  the  novelty  of  an  inven- 
tion, Buller,  J.,  laid  down  the  rule,  that  when  the  novelty  is 
disputed,  the  patentee  is  bound  to  offer  some  evidence  of  nov- 
elty. That  is,  he  must  show  in  what  his  invention  consists, 
and  that  he  produced  the  effect  proposed  by  his  patent,  in  the 
manner  specified.  Slight  evidence  of  this  on  his  part  is  suffi- 
cient, and  it  is  then  incumbent  on  the  party  alleging  want  of 
novelty  to  show  the  defect.- 


producing  the  rotary  motion,  was  a  sufficient  change  in  form,  or  principle,  or 
results,  to  justify  a  patent. 

'  Lowell  V.  Lewis,  1  Mas.  182;  Bedford  v.  Hunt,  lb.  302;  Kneass  v. 
The  Schuylkill  Bank,  4  Wash.  9,  12  ;  2  Kent's  Com.  369  ;  Phillips  on 
Patents,  136-144.  Evidence  that  the  invention  of  the  defendant  is  better 
than  that  of  the  plaintiff,  is  improper,  except  to  show  a  substantive  differ- 
ence between  the  two  inventions.     Alden  v.  Dewey,  1  Story's  R.  336. 

*  Turner  v.  Winter,  1  T.  R.  602,  607. 

3 


25  LAW     OF    PATENTS. 

«§>  30.  Under  our  law  it  would  seem  that  the  patent  itself  is 
prima  facie  evidence  of  the  novelty  of  the  invention.  The 
act  of  1836,  ^  6,  requires  the  applicant  to  make  oath  that  he 
verily  believes  himself  to  be  the  original  and  first  inventor  or 
discoverer  of  the  thing,  and  that  he  does  not  know  or  believe 
that  it  was  ever  before  known  or  used.  Mr.  Justice  Story  has 
held  that  this  oath,  on  a  trial,  is  evidence  in  the  cause,  of  a 
prima  facie  character,  and  that  it  is  the  foundation  of  the  onus 
probandi  thrown  upon  the  defendant.'  The  patent  recites  the 
oath,  and  thus  the  jury  have  cognizance  of  it ;  and  as  the  oath 
asserts  that  the  patentee  was  the  original  and  first  inventor,  it 
must  be  evidence  of  the  novelty  of  the  invention,  if  it  is  evi- 
dence of  the  fact  that  the  patentee  was  the  inventor.' 

<^  31.  In  connection  with  the  subject  of  novelty,  it  is  further 
to  be  remembered,  that  our  statute  also  requires  that  the  subject- 
matter  of  a  patent  should  not  have  been  "  known  or  used  by 
others  before  the  discovery  or  invention  thereof "  by  the 
patentee.^ 


'  Alden  v.  Dewey,  1  Story's  R.  336. 

*  Ibid.  See  also  Stearns  v.  Barrett,  1  Mas.  R.  175 ;  Pennock  v.  Dia- 
logue, 4  Wash.  R.  538  ;  Dixon  v.  Moyer,  Ibid.  68  ;  Phillips  on  Patents,  407. 

^  Act  of  1836,  ^  6.  Upon  the  former  law,  the  words  of  which  were 
"  not  known  or  used  before  the  application,"  the  Supreme  Court  of  the  United 
States  put  the  construction  which  has  been  adopted  by  Congress  in  the  subse- 
quent statute.  "  What  then  is  the  true  meaning  of  the  words  '  not  known 
or  used  before  the  application]  '  They  cannot  mean  that  the  thing  invented 
was  not  known  or  used  before  the  application  by  the  inventor  himself,  for 
that  would  be  to  prohibit  him  from  the  only  means  of  obtaining  a  patent. 
The  use  as  well  as  the  knowledge  of  his  invention,  must  be  indispensable  to 
enable  him  to  ascertain  its  competency  to  the  end  proposed,  as  well  as  to 
perfect  its  component  parts.  The  words,  then,  to  have  any  rational  inter- 
pretation, must  mean,  not  known  or  used  by  others  before  the  application. 
But  how  known  or  used?  If  it  were  necessary,  as  it  well  might  be,  to 
employ  others  to  assist  in  the  original  structure  or  use  by  the  inventor  him- 
self: or  if  before  his  application  for  a  patent  his  invention  should  be  pirated 
by  another,  or  used  without  his  consent,  it  can  hardly  be  supposed  that  the 
legislature  had  within  its  contemplation  such  knowledge  or  use." 


NOVELTY     AND    UTILITY.  2  4 

<§.  32.  The  time  of  the  knowledge  or  use  of  an  invention  by 
others  which  is  to  vitiate  a  patent,  is  a  very  important  point. 
In  England,  such  knowledge,  obtained  at  any  time  and  in  any 
mode,  before  the  application  for  a  patent,  is  sufficient  to  invali- 
date it.  But  in  this  country,  it  was  settled  as  the  true  construc- 
tion of  the  act  of  1793,  which  used  the  words,  "  not  known  or 
used  before  the  application,"  that  these  words,  taken  in  connec- 
tion with  other  provisions  of  the  statute,  meant  that  the  inven- 
tion should  not  have  been  known  or  used  before  the  discovery 
by  the  patentee.*  This  construction  was  afterwards  adopted  by 
congress  in  the  act  of  1836,  in  so  many  terms. 

<§>  33.  The  word  "  others,"  though  used  in  the  plural  in  this 
statute,  was  used  to  denote  that  the  use  should  be  by  some  other 
person  or  persons  than  the  patentee ;  and  therefore  the  prior 
use  by  one  person  other  than  the  patentee  is  sufficient  to  show 
that  the  patentee  was  not  the  first  inventor.' 

"  We  think  then,  the  true  meaning  must  be,  not  known  or  used  by  the  pub- 
lic before  the  application.  And  thus  construed,  there  is  miich  reason  for  the 
limitation  thus  imposed  by  the  act.  While  one  great  object  was,  by  holding 
out  a  reasonable  reward  to  inventors  and  giving  them  an  exclusive  right  to 
their  inventions  for  a  limited  period,  to  stimulate  the  efforts  of  genius  ;  the 
main  object  was  '  to  promote  the  progress  of  science  and  useful  arts  ;  '  and 
this  could  be  done  best,  by  giving  the  public  at  large  a  right  to  make,  con- 
struct, use  and  vend  the  thing  invented,  at  as  early  a  period  as  possible, 
having  a  due  regard  to  the  rights  of  the  inventor.  If  an  inventor  should  be 
permitted  to  hold  back  from  the  knowledge  of  the  public  the  secrets  of  his 
invention  ;  if  he  should  for  a  long  period  of  years  retain  the  monopoly,  and 
make,  and  sell  his  invention  publicly,  and  thus  gather  the  whole  profits  of  it, 
relying  upon  his  superior  skill  and  knowledge  of  the  structure  ;  and  then, 
and  then  only,  when  the  danger  of  competition  should  force  him  to  secure 
the  exclusive  right,  he  should  be  allowed  to  take  out  a  patent,  and  thus 
exclude  the  public  from  any  further  use  than  what  should  be  derived  under 
it  during  his  fourteen  years;  it  would  materially  retard  the  progress  of  sci- 
ence and  the  useful  arts,  and  give  a  premium  to  those  who  should  be  least 
prompt  to  communicate  their  discoveries."  Pennock  v.  Dialogue,  2  Peters's 
S.  C.  R.  18,  19. 

»  Melius  V.  Silsbee,  4  Mas.  R.  108  ;  Treadwell  v.  Bladen,  4  Wash.  R.  707. 

*  Reed  v.  Cutter,  1  Story's  R.  590.  See  also  Bedford  v.  Hunt,  1  Mas. 
R.  302. 


28  LAW     OF     PATENTS. 

<§,  34.  But  the  question  still  remains,  what  constitutes  "  use  " 
and  "knowledge  "  in  the  sense  of  the  statute?  Does  the  act 
simply  mean  that  the  mere  product  of  an  art  or  the  mere  exist- 
ence of  a  machine,  manufacture  or  composition  of  matter,  if 
found  in  the  possession  of  another,  before  the  invention  or  dis- 
covery by  the  patentee,  shall  be  sufficient  to  invalidate  a  patent? 
Or  does  it  mean,  that  the  art  itself,  the  mode  of  constructing 
the  machine,  manufacture  or  composition  of  matter,  must  at  the 
time  of  the  invention  or  discovery  by  the  patentee,  be  a  known 
thing  and  in  use  by  others  than  the  patentee,  in  order  to  vitiate 
the  patent  ?  This  presents  the  difficult  question,  what  is  to  be 
the  effect  of  a  perfected  invention,  once  in  actual  use,  and  sub- 
sequently abandoned  or  lost,  upon  the  rights  of  an  original 
inventor  ?  Many  arts,  formerly  known,  have  been  wholly  lost ; 
the  product  of  such  arts  may  be  still  extant ;  and  it  is  a  most 
important  inquiry,  whether  a  new  discoverer  or  inventor  of  an 
art  of  producing  the  same  or  similar  things,  can  or  cannot 
obtain  a  valid  patent  for  his  original  independent  discovery. 

<§.  35.  In  England,  the  statute  of  monopolies  permitted  the 
granting  of  a  patent  to  '•'  the  true  and  first  inventor  of  such 
manufacture,  which  others  at  the  time  of  making  such  letters- 
patent  shall  not  use,"  Our  statute  requires  that  the  patentee 
shall  be  the  "  first  inventor  "  of  an  art,  machine,  manufacture  or 
composition  of  matter,  not  known  or  used  by  others  before  his 
discovery,"  &.c.  There  is  no  very  material  difference  between 
the  English  law  and  our  own,  therefore,  except  as  to  the  time 
of  the  use  by  others,  which  in  England,  extends  down  to  the 
issuing  of  the  letters-patent,  but  with  us  is  confined  to  the 
period  of  the  patentee's  invention  or  discovery.  Now  it  is  not 
settled  in  England,  that  the  prior  knowledge  of  an  invention, 
long  lost  sight  of  to  the  public,  will  vitiate  subsequent  letters- 
patent  for  the  same  invention.  The  doctrine  in  relation  to 
prior  use  in  England  has  been  recently  promulgated,  in  the 
House  of  Lords,  as  follows  :  that  although  the  use  of  an  invention 
may  have  been  discontinued,  if  it  has  been  once  publicly  used, 


NOVELTY     AND    UTILITY.  29 

and  the  recollection  of  it  has  not  been  wholly  lost,  it  will  be 
sufficient  to  invalidate  a  subsequent  patent.'  The  subject-mat- 
ter of  the  patent  in  this  case  was  machinery ;  and  the  judg- 
ments delivered  by  their  lordships,  who  spoke  upon  the  case, 
seem  to  have  proceeded  upon  the  ground  that  such  prior  use  of 
a  perfected  invention,  in  case  of  machinery,  negatives  the  pro- 
position that  the  patentee  was  the  *'  first  inventor,"  as  also  the 
proposition  that  others  had  not  previously  used  the  same  thing. 
At  the  same  time,  a  strong  intimation  was  given,  that  the  prior 
use  of  an  invention,  if  abandoned  and  lost  sight  of,  so  as  not  to 
be  known  to  the  public,  presents  a  different  question  from  an 
invention  which  has  been  merely  disused,  but  the  existence  of 
which  shows  that  the  public  have  the  knowledge  and  the  means 
of  making  the  same  thing  already  in  their  possession." 

<§.  36.  This  distinction,  if  sound,  presents  two  important  inqui- 
ries :  first,  whether  there  is  any  class  of  cases,  where  the  mere 
previous  existence  of  a  thing,  the  art  of  making  which  has  been 
lost,  negatives  the  fact  that  a  subsequent  discoverer  of  an  art  of 
making  the  same  or  a  similar  thing  is  the  "  first  inventor  "  as 
those  words  are  used  in  the  statute  ;  secondly,  whether  the  use  or 
knowledge  intended  by  the  statute,  in  cases  of  this  kind,  means 
the  use,  or  knowledge  of  the  art  of  making  the  thing,  or  whether 
it  means  merely  the  use  of  the  thing  itself,  or  the  knowledge 
that  it  exists,  without  the  means  of  practising  the  invention 


»  The  Househill  Company  r.  Neilson,  Webs.   Pat.  Cas.  673,  709,  710, 
716. 

2  The  Lord  Chancellor  (Lyndhurst)  said,  "  It  must  not  be  understood 
that  your  lordships,  in  the  judgment  you  are  about  to  pronounce,  have  given 
any  decision  upon  this  state  of  facts,  namely,  if  an  invention  had  been  for- 
merly used  and  abandoned  many  years  ago,  and  the  whole  thing  had  been 
lost  sight  of.  That  is  a  state  of  facts  not  now  before  iis.  Therefore  it 
must  not  be  understood  that  we  have  pronounced  any  opinion  whatever  upon 
that  state  of  things.  It  is  possible  that  an  invention  may  have  existed  fifty 
years  ago,  and  may  have  been  entirely  lost  sight  of,  and  not  known  to  the 
public.  What  the  effect  of  this  state  of  things  might  be  it  is  not  necessary 
for  us  to  pronounce  upon."  lb.  717. 
3* 


30  I'AW     OF     PATENTS. 

itself.  V,(>\h  of  those  questions  may  arise,  for  instance,  in  refer- 
ence to  an  article  wjiich  has  been  patented  in  England,  to  wit, 
an  encaustic  tile,  a  description  of  which  was  well  known  in  the 
middle  ages,  hut  the  art  of  manufacturing  which  has  been  lost ; ' 
or  in  reference  to  such  arts  as  that  of  staining  glass. 

<§,  37.   Willi    regard  to  the   first  f|uestion,  if  the  words  "  first 
inventor "  are  to  be  taken  in  their  literal  import,  and   without 
reference  to  the  character  of  tlir;  subject-matter,  whether  it  fur- 
nishes  or  does   not  furnish   on   mere  inspection  or  analysis  a 
knowledge  of  the  means  by  which   it  is  produced  —  then  it  is 
only  necessary  in  any  case  to  show  that  the  thing  itself  has 
existed  before  in  order  to  negative  the  claim  that  the  subsequent 
patentee  is  the  "  first  inventor."     This  might  be  all  that  would 
be  necessary   in  cases  of  machinery,  because  the  machine  is  a 
collection  of  material  parts  in  a  certain  combination,  the  exist- 
ence of  whicli,  at  any  previous  time,  shows  that  it  cannot  have 
been  again  invented  for  the  first  time.     I>ut  with  regard   to  the 
arts  and  the  products  of  the  arts,  it  may  be  very  different.    The 
same  thing  may  have  been  produced  at  one  time  by  one  pro- 
cess, now  wholly  lost  sight  of,  and  at  another  time,  by  another 
process,  or  by  the  independent  discovery  of  the  same   process. 
It  can  never  be  known,  with  certainty,  whether  the   subsequent 
process  of  manufacture  is  the    same  with   the  first,  which  may 
always   have  been  a  secret,  and  is  at  any  rate,  now  unknown. 
The   product  alone  is   the   same,   or  similar  ;    and  if  the  mere 
existence  of  the  same  thing,  without  the  knowledge  of  the  mode 
by  which  it  was  produced,  excludes  a  subsequent  independent 
discoverer    of  a    process    of  making    that    thing    from    being 
regarded  as  the  "  first  inventor,"  a  large  class  of  what  are  really 
original  inventions  and  inventions  "  first "   as  regards  the  state 
of  knowledge,  are  excluded  from  tlie  benefits  of  the  [)atenl  law. 
The  difference  between  inventions   or  discoveries  of  this  kind, 
and  cases  of  machinery,  is,  that  in  a  machine  the  invention  con- 


'  Wright'8  Patent,  WcjIw.  Pat.  Cas.  7'M. 


NOVELTY     AND    UTILITY.  31 

sists  ill  the  putting  together,  in  n  certain  combination,  material 
parts,  intended  to  operate  upon  each  other  according  to  certain 
laws  of  motion,  to  produce  a  given  ellcct ;  and  this  when  once 
done,  is  done  forever,  and  can  only  be  done  upon  one  principle 
and  plan,  (hat  remain  always  the  same  as  long  as  the  same 
machine  is  rei)roducod  ;  but  in  the  case  of  a  mamifacture  or 
product  of  an  art,  the  invention  consists  in  the  process  by  which 
the  thing  itself  is  produced,  which  may  be  invented  in  one  way 
at  one  time  and  in  another  way  at  a  subsequent  time,  so  that 
the  subsccpicnt  inventor  may  be  literally  as  well  as  metaphysi- 
cally the  "  first  inventor  "  of  his  process  of  making  the  thing. 

<§.  38.  Upon  principle,  therefore,  it  would  seem,  that,  in 
regard  to  some  inventions,  the  phrase  "  first  inventor  "  ought  to 
receive  such  a  construction,  as  will  allow  a  patent  to  the  new 
discoverer  of  a  process  of  producing  a  thing,  the  art  of  making 
which  lias  been  lost,  upon  the  ground  that  he  is,  as  fiir  as  can 
be  ascertained,  the  first  inventor  of  his  process  of  making  that 
thing. 

<§.  39.  With  regard  to  the  second  question  which  arises  under 
our  statute,  upon  the  clauses  which  provide  against  the  prior 
use  and  knowledge  of  the  thing,  it  may  perhaps  be  considered 
that  those  provisions  arc  cunudative  upon  the  previous  requisi- 
tion that  the  patentee  shall  be  the  first  inventor.  The  statute 
requires  that  the  jiatentee  shall  make  oath  that  he  verily  believes 
himself  to  be  the  original  antl  first  inventor,  and  that  he  does 
not  know  or  believe  that  the  thing,  art,  machine,  composition  or 
improvement  was  ever  before  known  or  used  ;  '  and  it  provides 
that  the  negative  of  these  propositions  may  be  proved  in  defence 
against  the  patent."  In  the  case  supposed  —  that  of  an  art  long 
lost,  but  of  which  specimens  of  the  manufacture  can  be  proved 
to  be  or  to  have  been  in  existence  —  the  patent  of  a  subsequent 
discoverer   of  an  art  of  making  the  same  or  a  similar  thing, 


'  Act  of  1836,  ^  6.  •  Ibid.  ^  15. 


32  LAW     OF    PATENTS. 

would  be  prima  facie  evidence  that  he  is  the  first  discoverer  of 
his  particular  process  of  making  the  thing.'  The  negative  is 
then  to  be  shown  in  defence ;  and  whether  this  can  be  shown, 
by  merely  producing  the  thing,  without  showing  the  process  by 
which  it  was  formerly  made,  depends  upon  the  force  to  be  given 
to  the  words  "  use  and  knowledge."  If  those  words  mean 
merely  that  the  prior  use  of  the  thing  itself,  or  the  prior  know- 
ledge of  its  existence,  is,  in  all  cases,  an  answer  to  the  allegation 
of  the  patentee  that  he  is  the  first  inventor  or  discoverer,  with- 
out showing  that  his  process  is  the  same  as  that  by  which  the 
thing  was  formerly  produced,  then  there  is  no  occasion  to 
inquire  further.  But  if,  on  the  contrary,  those  words  are  to  be 
taken  with  reference  to  the  character  of  the  subject-matter,  in 
each  case,  then  it  is  apparent  that  there  may  be  cases,  where,  as 
in  such  arts  as  those  above  referred  to,  the  invention  or  discov- 
ery is  not,  strictly  speaking,  the  thing  itself,  but  a  process  of 
making  that  thing.  The  words  of  the  statute  must  be  taken 
with  separate  application  to  each  of  the  subjects  recited  as  the 
proper  subject-matters  of  a  patent.  The  language  is  that  "  he 
is  the  original  and  first  inventor  of  the  art,  machine,  composi- 
tion, &c.,  and  that  he  does  not  know  or  believe  that  the  same 
was  ever  before  known  or  used ;  "  *    and   in  the  subsequent 


*  The  only  evidence  which  the  plaintiff  can  add  to  his  patent,  on  the  issue 
of  novelty,  is  that  of  persons  who  were  in  the  way  of  hearing  of  the  inven- 
tion not  having  heard  of  it  before.  Upon  this  point,  Sir  N.  C.  Tindall, 
C.  J.,  said,  "  You  cannot  prove  a  negative  strictly.  You  can  only  do  so  by- 
exhausting  the  affirmative  instances  of  it,  by  calling  persons  who  have  never 
heard  of  it  or  seen  it,  and  the  more  those  persons  are  in  the  way  of  hearing 
of  it  or  seeing  it,  if  it  had  existed,  the  stronger  is  that  exhausting  evidence, 
if  I  may  so  call  it,  in  its  effect  and  value  with  the  jury."  Cornish  v.  Keene, 
Webs.  Pat.  Cas.  509.  In  Washburn  v.  Gould,  3  Story's  R.  122,  142,  Mr. 
Justice  Story  instructed  the  jury  upon  the  question  of  invention,  that  it  was 
for  the  defendant  to  show,  beyond  a  reasonable  doubt,  that  there  was  a  prior 
invention  to  the  plaintiffs,  because  the  plaintiff  has  a  right  to  rest  upon  his 
patent  for  his  invention  till  its  validity  is  overthrown.  If  there  was  a  rea- 
sonable doubt  as  to  the  priority  of  invention,  the  plaintiff  was  entitled  to  the 
benefit  of  that  doubt.  '  &  6. 


NOVELTY    AND    UTILITY.  33 

clause,  the  "  thing  patented  "  is  declared  to  be  subject  to  the 
defence  that  the  patentee  was  not  "  the  original  and  first  inven- 
tor or  discoverer  "  or  that  "  it  "  had  been  described  in  some 
public  work,  or  had  been  in  public  use.'  The  "  thing  patent- 
ed "  is  the  antecedent  of  "  it,"  and  in  the  case  of  an  art,  this 
may  be,  not  the  product  itself,  but  the  process  of  producing  it; 
and  where  it  cannot  be  shown  that  the  process  invented  by  the 
patentee  has  been  "  known  "  or  "  used  "  before,  the  mere  pro- 
duction in  evidence  of  a  similar  manufacture  produced  at  a 
former  period  by  an  unknown  art,  does  not  negative  the  allega- 
tion that  the  patentee  invented  or  discovered  the  art  by  which 
he  has  produced  that  manufacture.* 

^  40.  But  aside  from  the  question  which  may  possibly  arise 
with  reference  to  this  class  of  discoveries,  the  expression  "  first 
inventor,"  as  used  in  our  statute,  means  that  the  patentee  must 
have  been  the  inventor  first  in  point  of  time  before  all  others. 
The  English  law  is  somewhat  different  from  ours,  on  this  point, 
for  although  it  is  requisite  in  England  that  the  patentee  should 
be  the  first  inventor,  yet  the  courts  have  so  construed  the  expres- 
sion, as  to  admit  of  a  valid  patent  in  a  variety  of  cases,  where 
the  patentee  was  not  absolutely  the  first  person  to  make  or  dis- 
cover the  thing ;  as  where  it  had  been  made  previously,  by 
another  person  who  had  concealed  it  from  every  one  else  ; '  and 
generally  in  England,  the  question  whether  the  patentee  is  the 
true  and  first  inventor  or  not,  depends  on  whether  he  borrowed 
the  invention  from  a  source  open  to  the  public*  But  in  this 
country,  these  distinctions  are  rejected  ;  and  it  is  held,  under 
our  statutes,  that  the  patentee  must  have  been  the  first  inventor, 
as  against  all  other  persons,  whether   they  have  made   known 


»  §  15. 

*  See  a  learned  note  on  the  bearing  of  the  English  statute  on  this  question, 
by  Mr.  Webster,  Pat.  Cas.  718,  719,  720. 

»  DoUand's  Case,  2  H.  Blackst.  470,  487.     Davies's  Pat.  Cas.  172.    • 

*  Walton  V.  Potter,  Webs.  Pat.  Cas.  592. 


34  LAW    OF    PATENTS. 

their  inventions  or  not.^      The  previous  knowledge  and  actual 


'  Reed  v.  Cutter,  1  Story's  R.  590,  596.  In  this  case  Mr.  Justice  Story 
said,  "  Uuder  our  patent  laws,  no  person,  who  is  not  at  once  the  first  as  well 
as  the  original,  inventor,  by  whom  the  invention  is  perfected  and  put  into 
actual  use,  is  entitled  to  a  patent.  A  subsequent  inventor,  although  an 
original  inventor,  is  not  entitled  to  any  patent.  If  the  invention  is  perfected 
and  put  into  actual  use  by  the  first  and  original  inventor,  it  is  of  no  conse- 
quence whether  the  invention  is  extensively  known  or  used,  or  whether  the 
knowledge  or  use  thereof  is  limited  to  a  few  persons,  or  even  to  the  first 
inventor  himself.  It  is  sufficient,  that  he  is  the  first  inventor,  to  entitle  him 
to  a  patent;  and  no  subsequent  inventor  has  a  right  to  deprive  him  of  the 
right  to  use  his  own  prior  invention.  The  language  of  the  Patent  Act 
of  1836,  ch.  357,  ^  6,  15,  and  of  the  Patent  Act  of  1837,  ch.  45,  §  9, 
fully  establish  this  construction  ;  and,  indeed,  this  has  been  the  habitual, 
if  not  invariable  construction  of  all  our  Patent  Acts  from  the  origin  of  the 
government.  The  language  of  the  Act  of  1836,  ch.  357,  ^  6,  '  not 
known  or  used  by  others  before  his  or  their  discovery  thereof '  has  never 
been  supposed  to  vary  this  construction,  or  to  require  that  this  invention 
should  be  known  to  more  than  one  person,  if  it  has  been  put  into  actual, 
practical  use.  The  Patent  Act  of  1790  used  the  language  '  not  before  known 
or  used  '  without  any  adjunct  (Act  of  1790,  ch.  34,  ^  1)  ;  and  the  Act  of 
1793,  used  the  language  '  not  known  or  used  before  the  application,'  (Act 
of  1793,  ch.  55,  §  I)  ;  and  the  latter  act  (^  6)  also  made  it  a  good  matter  of 
defence  that  the  thing  patented  '  had  been  in  use  '  anterior  to  the  supposed 
discovery  of  the  patentee.  It  early  became  a  question  in  our  Courts,  whether 
a  use  by  the  patentee  himself,  before  his  application  for  a  patent,  would  not 
deprive  him  of  his  right  to  a  patent.  That  question  was  settled  in  the  neg- 
ative ;  and  the  language  of  the  first  section  of  the  act  of  1793,  ch.  55,  was 
construed  to  be  qualified  and  limited  in  its  meaning,  by  that  of  the  sixth  sec- 
tion ;  and  the  words  'not  known  or  used  before  the  application  '  in  the  first 
section,  were  held  to  mean  not  known  or  used  by  the  public  before  the  appli- 
cation. The  case  of  Pennoch  v.  Dialogue,  (2  Peters  R.  18  to  22,)  is  a 
direct  authority  to  this  effect.  And  it  was  probably  in  reference  to  that  very 
decision,  that  the  words  'by  others'  were  added  in  the  Act  of  1836,  ch. 
357,  ^  6,  by  way  of  explanation  of  the  doubt  formerly  entertained  on  the 
subject.  The  words  'by  others'  were  not  designed  to  denote  a  plurality 
of  persons,  by  whom  the  use  should  be,  but  to  show  that  the  use  should  be 
by  some  other  person  or  persons,  than  the  patentee.  It  would  be  strange 
indeed,  if,  because  the  first  inventor  would  not  permit  other  persons  to  know 
his  invention,  or  to  use  it,  he  should  thereby  be  deprived  of  his  right  to  obtain 
a  patent,  and  it  should  devolve  upon  a  subsequent  inventor  merely  from  his 
ignorance  of  any  prior  invention  or  prior  use ;  or  that  a  subsequent  inventor 


NOVELTY    AND    UTILITY.  ^  35 

application  of  the  thing  by  any  one  person,  however  privately,  is 
sufficient  to  defeat  the  patent/ 

should  be  entitled  to  a  patent,  notwithstanding  a  prior  knowledge  or  use  of 
the  invention  by  one  person,  and  yet  should  be  deprived  of  it  by  a  like  knowl- 
edge or  use  of  it  by  two  persons.  In  Pennock  v.  Dialogue,  (2  Peters's  R.  1, 
23,)  the  Supreme  Court  expressly  held,  that  the  sixth  section  of  the  Patent 
Act  of  1793,  ch.  55,  then  in  force,  (and  on  this  point  the  law  has  not  under- 
gone any  alteration,)  '  gives  the  right  to  the  first  and  true  inventor,  and  to 
him  only  ;  if  known  or  used  before  his  supposed  discovery,  he  is  not  the  first, 
although  he  may  be  the  true  inventor;  and  that  is  the  case,  to  which  the 
clause  looks.' 

*'I  am  aware  of  Z)oZ/a?ic?'s  case;  but  I  do  not  consider  it  to  be  a  just  exposi- 
tion of  the  Patent  Law  of  this  country,  however  correctly  it  may  have  been 
decided  under  that  of  England.  In  that  case  it  seems  to  have  been  held,  that 
Dolland  was  entitled  to  his  patent  because  he  was  an  inventor  of  the  thing 
patented,  although  there  was  a  prior  invention  thereof  by  another  person,  who, 
however,  had  kept  it  a  secret,  so  that  the  public  had  no  benefit  thereof.  And 
perhaps  this  was  not  an  unjustifiable  exposition  of  the  Statute  of  Monopolies, 
(Stat,  of  21  James  I,  ch.  3,  ^  6,)  under  which  patents  are  granted  in  England. 
But  the  language  of  our  Patent  Acts  is  different.  The  Patent  Act  of  1836, 
ch.  257,  (^  7,  8,  13,  15,  16,)  expressly  declares,  that  the  applicant  for  a 
patent  must  be  the  first,  as  well  as  an  original  inventor. 

"  The  passage  cited  from  Mr.  Phillips's  work  on  patents,  (p.  395,)  in  the  sense 
in  which  I  understand  it,  is  perfectly  accurate.  He  there  expressly  states, 
that  the  party  claiming  a  patent  must  be  the  original  and  first  inventor  ;  and 
that  his  light  to  a  patent  will  not  be  defeated  by  proof,  that  another  person 
had  anticipated  him  in  making  the  invention,  unless  such,  person  '  was  using 
reasonable  diligence  in  adapting  and  perfecting  the  same.'  These  latter 
words  are  copied  from  the  fifteenth  section  of  the  Act  of  1836,  chapter  357, 
and  constitute  a  qualification  of  the  preceding  language  of  that  section  ;  so 
that  an  inventor,  who  has  first  actually  perfected  his  invention,  will  not  be 
deemed  to  have  unjustly,  or  surreptitiously  obtained  a  patent  for  that,  which 
was  in  fact  first  invented  by  another,  unless  the  latter  was  at  the  time  using 
reasonable  diligence  in  adapting  and  perfecting  the  same.  And  this  I  take  to 
be  clearly  law  ;  for  he  is  the  first  inventor  in  the  sense  of  the  act,  and  entitled 
to  a  patent  for  his  invention,  who  has  first  perfected  and  adapted  the  same  to 
use ;  and  until  the  invention  is  so  perfected  and  adapted  to  use,  it  is  not 
patentable.  An  imperfect  and  incomplete  invention,  resting  in  mere  theory, 
or  in  intellectual  notion,  or  in  uncertain  experiments,  and  not  actually  reduced 
to  practice,  and  embodied  in  some  distinct  machinery,  apparatus,  manufacture, 
or  composition  of  matter,  is  not,  and  indeed  cannot  be  patentable  under  our 
'  Ibid. 


35  LAW    OF    PATENTS. 

,^41.  We  have  already  seen,  that  there  are  two  issues,  with 
respect  to  novelty ;  one,  whether  the  patentee  is  the  first  in- 
ventor ;  the  other,  whether  the  invention,  at  the  time  of  his 
application,  be  new  as  to  public  use  and  exercise.  These  issues 
may  be  involved  together,  because  if  the  last  is  negatived,  it 
may  be  negatived  by  evidence  which  shows  that  the  patentee 
was  not  the  first  inventor.  But  in  point  of  law  and  fact,  these 
are  distinct  issues.  The  patentee  may  have  been  the  first  in- 
ventor, and  yet  he  may  have  allowed  the  invention  to  get  into 
public  use,  and  exercise,  before  his  application  ;  or  the  inven- 
tion may  never  have  been  in  public  use,  and  yet  the  patentee 
may  not  be  the  first  inventor,  by  reason  of  his  having  learned  it 
from  some  one  else,  or  from  some  published  work,  or  from  some 
other  source  open  to  the  public. 

-^  42.  It  is  an  important  question  of  construction,  therefore, 
to  determine  when  a  claimant  is  the  first  inventor,  in  the  sense 
of  the  statute.  This  depends  upon  the  nature  and  extent  of 
the  knowledge  which  any  other  person  may  have  had  of  the 


Patent  Acts;  since  it  is  utterly  impossible,  under  such  circumstances,  to 
comply  with  the  fundamental  requisites  of  those  acts.  In  a  race  of  diligence 
between  two  independent  inventors,  he  who  first  reduces  his  invention  to  a 
fixed,  positive,  and  practical  form  would  seem  to  be  entitled  to  a  priority  of 
right  to  a  patent  therefor.  The  clause  of  the  fifteenth  section,  now  under 
consideration,  seems  to  qualify  that  right,  by  providing  that,  in  such  cases, 
he  who  invents  first  shall  have  the  prior  right,  if  he  is  using  reasonable  dili- 
gence, in  adapting  and  perfecting  the  same,  although  the  second  inventor 
has,  in  fact,  first  perfected  the  same,  and  reduced  the  same  to  practice  in  a 
posuive  form.  Tt  thus  gives  full  effect  to  the  well  known  maxim,  that  he  has 
the  better  right,  who  is  prior  in  point  of  time,  namely,  in  making  the  discovery 
or  invention.  But  if,  as  theargument  of  the  learned  counsel  insists,  the  text  of 
Mr.  Phillips  means  to  affirm  (what,  I  think,  it  does  not)  that  he,  who  is  the  origi- 
nal and  first  inventor  of  an  invention,  so  perfected  and  reduced  to  practice,  will 
be  deprived  of  his  right  to  a  patent,  in  favor  of  a  second  and  subsequent  inventor, 
simply  because  the  first  invention  was  not  then  known,  or  used  by  other  per- 
sons, than  the  inventor,  or  not  known  or  used  to  such  an  extent,  as  to  give  the 
public  full  knowledge  of  its  existence,— I  cannot  agree  to  the  doctrine  ;  for, 
in  my  judgment,  our  Patent  Acts  justify  no  such  construction." 


NOVELTY    AND    UTILITY.  37 

subject  of  the  patent ;  and  upon  this  inquiry,  we  may,  perhaps, 
usefully  follow  the  light  of  English  authorities  as  well  as  our 
own. 

>^  43.  It  is  not  sufficient  to  defeat  a  patent,  already  issued, 
that  another  person  has  conceived  the  possibility  of  effecting 
what  the  patentee  has  actually  accomplished.  To  constitute  a 
prior  invention,  the  party  alleged  to  have  made  it,  must  have 
proceeded  so  far  as  to  have  entitled  himself  to  a  patent,  in  case 
he  had  made  an  application ;  or  in  other  words,  he  must  have 
reduced  his  idea  to  practice,  and  embodied  it  in  some  distinct 
form.^  It  is  true,  that  in  a  race  of  diligence  between  two  inde- 
pendent inventors,  our  law  provides  for  the  priority  of  concep- 
tion, by  allowing  the  one  who  first  invents  to  obtain  the  patent, 
if  he  was  using  reasonable  diligence  in  adapting  and  perfecting 
his  invention,  although  a  second  inventor  has,  in  fact,  first  per- 
fected the  invention,  and  reduced  it  to  practice.-  But  where  a 
patent  has  been  granted  to  a  patentee,  who  did  not  surrepti- 
tiously obtain  his  knowledge  from  a  prior  inventor,  who  was 
using  reasonable  diligence  to  perfect  and  adapt  the  invention, 
in  order  to  defeat  it  on  the  ground  that  the  patentee  was  not 
the  first  inventor,  some  previous  inventor  must  not  only  have 
had  the  idea,  but  must  also  have  carried  the  idea  into  practical 
operation  ;  for  he  is  entitled  to  a  patent,  who,  being  an  original 
inventor,  has  first  perfected  and  adapted  the  invention  to  actual 
use.^ 


'  Reed  v.  Cutter,  1  Story's  R.  590. 

'  Act  of  1836,  ^  15  ;  Reed  r.  Cutter,  1  Story's  R.  590. 

'  Reed  r.  Cutter,  ut  svpra.  Woodcock  v.  Parker,  1  Gallison's  R.  438, 
439.  In  Gibson  v.  Brand,  Webs.  Pat.  Cas.  628,  Sir  N.  C.  Tindall,  C.  J., 
said  to  the  jury,  "  It  is  quite  clear,  that  if,  on  the  evidence  you  have  heard, 
you  are  satisfied,  that  this  which  is  alleged  to  be  a  discovery  by  the  plaintiffs, 
had  been  publicly  known  and  practised  in  England,  there  is  an  end  to  the 
validity  of  the  patent.  It  would  not  be  sufficient  to  destroy  the  patent  to 
show,  that  learned  persons  in  their  studies  had  foreseen,  or  had  found  out 
this  discovery,  that  is  afterwards  made  public,  or  that  a  man  in  his  private 
warehouse  had,  by  various  experiments,  endeavored  to  discover  it  and  failed, 
4 


38  LAW     OF    PATENTS. 

<5>  44.  But  when  may  a  prior  invention  be  said  to  have  been 
perfected  and  adapted  to  actual  use  ?  Does  the  law  furnish  any 
test  by  which  this  question  can  be  answered  ?  In  the  first  place, 
it  is  clear,  that  mere  trials  and  experiments,  though  continued 
up  to  the  date  of  a  patent,  will  not  vitiate  the  grant,  if  the  pa- 
tentee had  no  knowledge  of  those  trials  and  experiments  ;  be- 
cause the  first  perfected  invention,  if  original,  is  entitled  to  the 
patent.^  In  the  second  place,  there  may  often  be  a  very  satis- 
factory test,  which  will  determine  whether  the  proceedings  of 
an  alleged  prior  inventor,  were  anything  more  than  trials  and 
experiments,  by  ascertaining  whether  he  at  any  time,  before  the 
date  of  the  patent,  abandoned  the  pursuit  of  the  object  at  which 
he  was  aiming.  If  he  did  so,  the  abandonment  has  been  said 
to  furnish  a  presumption  that  his  proceedings  rested  in  experi- 
ment and  trial  alone.^ 


and  had  given  it  up.  But  if  you  perceive,  on  the  evidence,  that  the  thing 
which  is  now  sought  to  be  protected  by  the  patent  has  been  used,  and  for  a 
considerable  period,  and  used  so  far  to  the  benefit  of  the  public,  as  to  be  sold 
to  any  body  who  thought  proper  to  purchase  it  of  those  who  made  it,  then  it 
beconaes  a  material  question,  whether  such  mode  of  user  is  not,  in  your  judg- 
ment, a  public  using  of  the  article,  of  the  process,  or  of  the  invention,  be- 
fore the  letters-patent  were  granted,  and  therefore  you  will  apply  the  evi- 
dence, when  you  come  to  it,  subject  to  such  an  explanation, —  not  giving  a 
force  or  efficacy  to  any  attempts  that  have  been  made  towards  the  discovery 
which  the  plaintiffs  set  up,  but  which  have  failed  and  been  abandoned,  and 
rested  indeed  only  in  experiment,  but  at  the  same  time  giving  full  effect  to 
such  evidence  as  has  been  brought  before  you  that  tends  to  show  that,  by 
other  persons,  on  various  occasions,  the  article  has  been  made,  and  the  pro- 
cess been  pursued  which  is  now  sought  to  be  protected,  and  has  been  sold 
to  such  of  the  public  as  have  thought  proper  to  come  forward  and  purchase." 

'  The  Househill  Company  v.  Neilson,  Webs.  Pat.  Cas.  708. 

*  In  the  case  last  cited.  Lord  Brougham  said,  "  If  an  invention  has  not 
been  completed,  but  if  it  all  rests  in  experiment  and  trial,  then  it  is  a  most 
material  circumstance  as  a  test,  whether  any  given  act  of  a  party,  other  than 
the  invention,  was  trial  or  complete  invention  ;  it  is  a  most  salutary  and  im- 
portant test  to  apply  with  a  view  to  ascertain  that,  to  see  whether  he  aban- 
doned or  continued  it.  If  he  abandoned  it,  if  he  gave  it  up  altogether,  and  for 
twenty  or  thirty  years  did  nothing,  it  is  a  very  strong  presumption  that  it  was 
only  experimental  —  not  an  invention  completed.  But  suppose  it  was  complete, 


NOVELTY    AND    UTILITY.  39 

<§>  45.  But  if,  on  the  contrary,  his  experiments  and  trials 
were  continued,  or  if  there  is  not  satisfactory  evidence  of  an 
abandonment  of  the  object,  then  it  becomes  a  question  of  fact, 
depending  on  tlie  nature  of  the  proposed  invention,  the  charac- 
ter of  the  experiments  and  the  results  attained,  to  determine 
whether  the  party  had  really  accomplished  the  same  substantial 
result  as  that  described  in  the  patent.' 

and  suppose  it  is  admitted  not  to  have  been  a  trial  —  suppose  it  is  allowed  to 
have  been  an  invention  executed,  if  I  may  so  speak,  not  merely  executory, 
or  not  merely  in  the  progress  of  invention,  but  an  invention  completed,  then 
it  is  one  of  the  greatest  errors  that  can  be  committed,  in  point  of  law,  to  say 
■with  respect  to  such  an  invention  as  that,  it  signifies  one  rush  whether  it  was 
completely  abandoned,  or  whether  it  was  continued  to  be  used  down  to  the 
very  date  of  the  patent.     Provided  it  was  invented  and  publicly  used  at  the 
time,  twenty  or  thirty  years  ago,  in  this  case  forty  years  ago,  it  is  perfectly 
immaterial,  not  immaterial  to  the  second  question,  the  second  condition, 
namely,  whether  it  was  used  or  not  at  the  time  of  the  granting  of  the  pa- 
tent, but  totally  immaterial  to  the  other  question,  which  is  equally  necessary 
to  be  ascertained  in  the  inventor's  favor,  whether  or  not  he  was  the  first  and 
true  inventor?  — for  he  must  be  the  first  and  true  inventor,  as  well  as  the 
only  person  using  it  at  the  time,  otherwise  he  is  not  entitled  to  the  letters 
patent."     Webs.  Pat.  Cas.  713.    In  Jones  v.  Pearce,  Webs.  Pat.  Cas.  124, 
Patteson,  J.  instructed  the  jury  as  follows  :  "  If  on  the  whole  of  this  evidence, 
either  on  the  one  side  or  the  other,  it  appeared  this  wheel,  constructed  by 
Mr.  Strutt's  order  in  1814,  was  a  wheel  on  the  same  principles,  and  in  sub- 
stance, the  same  wheel  as  the  other  for  which  the  plaintiff  had  taken  out  his 
patent,  and  that  was  used  openly  in  public,  so  that  every  body  might  see  it, 
and  had  continued  to  use  the  same  thing  up  to  the  time  of  taking  out  the  pa- 
tent, undoubtedly  then,  that  would  be  a  ground  to  say  that  the  plaintiff's  in- 
vention is  not  new,  and  if  it  is  not  new,  of  course  his  patent  is  bad,  and  he 
cannot  recover  in  this  action  ;  but  if,  on  the  other  hand,  you  are  of  opinion 
that  Mr.  Stiutt's  was  an  experiment,  and  that  he  found  it  did  not  answer, 
and  ceased  to  use  it  altogether,  and  abandoned  it  as  useless,  and  nobody  else 
followed  it  up,  and  that  the  plaintiff's  invention,  which  came  afterwards, 
was  his  own  invention,  and  remedied  the  defects,  if  I  may  so  say,  although 
he  knew  nothing  of  Mr.  Strutt's  wheel,  he  remedied  the  defects  of  Mr. 
Strutt's  wheel,  then  there  is  no  reason  for  saying  the  plaintiff's  patent  is  not 
good  ;  it  depends  entirely  upon  what  is  your  opinion  upon  the  evidence  with 
respect  to  that,  because,  supposing  you  are  of  opinion  that  it  is  a  new  inven- 
tion of  the  plaintiff's,  the  patent  is  then  good  ;    then  the  only  remaining 
question  would  be,  whether  the  defendant  has  or  not  infringed  the  patent." 
*  In  Galloway  v.  Bleaden,  Webs.  Pat.  Cas.  521,  526,  Sir  N.  C.  Tindall, 


40  LAW     OF    PATENTS. 

«§>  46.  But  although  the  subject  of  every  patent  must  have 
been  "  invented  or  discovered  "  by  the  party  claiming  to  be  the 
inventor  or  discoverer,  still,  as  suggestions  and  hints  may  often 
have  been  made  use  of  by  a  man  of  the  most  original  genius,  in 
the  production  of  inventions,  it  becomes  necessary  to  inquire  who 
is  to  be  regarded  as  the  inventor  or  discoverer,  in  the  sense  of 
being  entitled  to  a  patent  for  the  thing  invented  or  discovered. 

«§>  47.  The  intellectual  production,  or  that  which,  when  per- 
fected, constitutes  the  thing  invented,  differing  from  all  other 
things  by  some  substantial  peculiarity  which  gives  it  a  distinct 
character,  is   what  the  law  means  to  protect  with  an  exclusive 


C.  J.,  said  to  the  jury,  "  the  question  you  are  to  determine  is,  whether  on 
the  evidence  the  thing  itself  was  complete,  so  as  to  be   used,  or  whether 

only  a  series  of  experiments  were  going  on."     That  there  had 

been  many  expeiiments  made  upon  the  same  line,  and  almost  tending,  if  not 
entirely,  to  the  same  result,  is  clear  from  the  testimony  you  have  heard,  and 
that  these  experiments  were  known  to  various  persons ;  but  if  they  rested  in 
experiment  only,  and  had  not  attained  the  object  for  which  the  patent  was 
taken  out,  mere  experiment,  afterwards  supposed  by  the  parties  to  be  fruit- 
less, and  abandoned  because  they  had  not  brought  it  to  a  complete  result, 
that  will  not  prevent  a  more  successful  competitor,  who  may  avail  himself  as 
far  as  his  predecessors  have  gone  of  their  discoveries,  and  add  the  last  link 
of  improvements  in  bringing  it  to  perfection."  So  also  in  Bedford  v.  Hunt, 
1  Mas.  302,  305,  Mr.  Justice  Story  said,  "  If  it  were  the  mere  speculation 
of  a  philosopher  or  a  mechanician,  which  had  never  been  tried  by  the  test  of 
experience,  and  never  pui  into  actual  operation  by  him,  the  law  would  not 
deprive  a  subsequent  inventor,  who  had  employed  his  labor  and  his  talents 
in  putting  it  into  piactice,  of  the  reward  due  to  his  ingenuity  and  enterprise. 
But  if  the  first  inventor  reduced  his  theory  to  practice,  and  put  his  machine 
or  other  invention  into  use,  the  law  never  could  intend  that  the  greater  or 
less  use  in  which  it  might  be,  or  the  more  or  less  widely  the  knowledge  of 
its  existence  might  circulate,  should  constitute  the  criterion  by  which  to 
decide  upon  the  validity  of  any  subsequent  patent  for  the  same  invention.  I 
hold  it  therefore  to  be  the  true  interpretation  of  this  part  of  the  statute,  that 
any  patent  may  be  defeated  by  showing,  that  the  thing  secured  by  the  patent, 
had  been  discovered  and  put  in  actual  use,  prior  to  the  discovery  of  the 
patentee,  however  limited  the  use  or  the  knowledge  of  the  prior  discovery 
might  have  been." 


NOVELTY     AND    UTILITY.  41 

privilege.  It  is  clear,  therefore,  that  many  suggestions  may 
have  been  made,  or  many  hints  taken  from  others,  without 
invalidating  the  claim  of  a  party  to  be  considered  as  the  author 
of  the  invention:  since  it  is  not  the  abstract  suggestion  or 
inchoate  idea,  which  the  law  intends  t(#  treat  as  the  sub- 
ject of  the  patent,  but  the  perfected  invention,  in  which 
the  idea  is  applied  to  a  practical  purpose  and  made  capable  of 
useful  operation.  There  may  be  a  long  interval  between  the 
first  suggestion  of  an  idea,  which  leads  to  or  forms  the  germ  of 
a  discovery,  and  the  actual  production  of  that  discovery,  in  all 
its  peculiarities,  constituting  in  its  perfect  state  the  thing 
invented.  This  interval  must,  in  many  cases,  be  occupied  by 
the  exercise  of  inventive  power,  of  the  highest  description,  on 
the  part  of  him  who  has  taken  the  first  suggestion  from  another, 
by  bringing  it  to  perfection,  or  developing  and  reducing  it  to 
practical  application  ;  and  the  extent  to  which  this  interval  is  so 
occupied  will  determine  whether  the  person  originally  suggesting, 
or  the  person  subsequently  applying  an  idea,  is  entitled  to  be 
regarded  as  the  inventor. 

<§.  48.  Thus  it  has  been  held  that  in  order  to  invahdate  a 
patent,  on  the  ground  that  the  patentee  received  from  another 
person  the  suggestion  of  the  invention,  it  is  not  enough  to  show 
that  the  naked  idea,  or  bare  possibility  of  accomplishing  the 
object  was  suggested.  On  the  other  hand  it  is  not  necessary 
that  the  minutice  of  the  invention  should  have  been  communi- 
cated by  another  person.  But  it  must  appear  that  the  invention 
was  substantially  communicated  to  the  patentee,  so  that  without 
more  inventive  power  he  could  have  applied  it  in  practice.^  So 
too,  it  has  been  held,  that  although  others  may  have  previously 
had  the  idea  of  a  machine  and  made  some  experiments  towards 
putting  it  in  practice,  the  person  who  first  brought  the  machine 
to  perfection  and  made  it  capable  of  useful  operation,  is  the 
inventor,  and  is  entitled  to  the  patent.^ 

>  Alden  v.  Dewey,  1  Story's  R.  336. 

*  Washburn  v.  Gould,  3  Story's  R.  122,  133.     In  this  case,  Mr.  Justice 
4* 


42  LAW     OF     PATENTS. 

<§,  49.  The  extent  to  which  a  person  may  avail  himself  of  the 
suggestions  or  inventive  faculties,  or  manual  dexterity  of  a  ser- 
vant, and  afterwards  claim  to  be  the  inventor,  does  not  perhaps 
admit  of  being  stated  in  any  precise  general  proposition.  It 
depends  upon  the  illative  situations  of  the  parties,  the  nature  of 
the  employment,  and  the  fact  of  the  employer  having  planned 
or  conceived  the  main  idea  of  the  invention.  The  person  who 
suggests  the  principle  of  an  invention  is  the  inventor ;  and  if 
this  be  the  servant,  the  employer  cannot  claim  the  invention  as 
the  author  of  it,  although  he  may  have  taken  the  servant  into 
his  employ  for  the  express  purpose.^  But  if  the  employer  con- 
Story  said,  "The  law  is,  that  whoeTer  perfects  a  machine,  is  entitled  to  a 
patent,  and  is  the  real  inventor,  although  others  may  previously  have  had 
the  idea,  and  made  some  experiments  towards  putting  it  in  practice.  In 
England  the  law  goes  even  so  far  as  to  grant  such  an  one  the  patent, 
although  the  antecedent  experiments  of  others  were  known  to  and  used  by 
him  in  perfecting  his  machine.  The  law  in  this  country  has  not  gone  quite 
so  far,  but  I  do  not  mean  to  say  that  there  would  be  any  difficulty  in  going 
to  that  extent.  At  any  rate,  he  is  the  inventor  and  is  entitled  to  the  patent, 
who  first  brought  the  machine  to  perfection  and  made  it  capable  of  useful 
operation."  See  also  Pennock  v.  Dialogue,  4  Wash.  578.  In  Tenant's 
case,  Dav.  Pat.  Cases,  429,  (cited  in  Hill  v.  Thompson,  8  Taunt.  395,)  there 
was  evidence  that  a  chemist  had  suggested  to  the  patentee  the  basis  of  the 
improvement  in  question.  The  patent  was  declared  invalid  ;  but  it  appears 
to  have  been  mainly  on  the  ground  that  the  improvement  had  been  in  actual 
use  for  six  years  before  the  patent.  See  8  Taunt.  395,  and  2  Evans's  Stat- 
utes, p.  6,  note  ;  Webs.  Pat.  Cas.  125,  note. 

'  Minter  v.  Wells,  Webs.  Pat.  Cas.  132.  In  this  case,  one  of  the  ques- 
tions submitted  to  the  jury  was,  whether  the  patentee  or  another  person, 
named  Sutton,  was  the  inventor.  Alderson,  B.  instructed  the  jury  as  fol- 
lows :  ''If  Sutton  suggested  the  principle  to  Mr.  Minter,  (the  patentee,) 
then  he  would  be  the  inventor.  If  on  the  other  hand  Mr.  Minter  suggested 
the  principle  to  Sutton,  and  Sutton  was  assisting  him,  then  Mr.  Minter 
would  be  the  first  and  true  inventor,  and  Sutton  would  be  a  machine,  so  to 
speak,  which  Mr.  Minter  uses  for  the  purpose  of  enabling  him  to  carry  his 
original  conception  into  effect."  In  Arkwright's  case,  with  respect  to  a  par- 
ticular roller,  part  of  the  machinery,  the  evidence  was,  that  Arkwright  had 
been  told  of  it  by  one  Kay;  that,  being  satisfied  of  its  value,  he  took  Kay 
for  a  servant,  kept  him  for  two  years,  employed  him  to  make  models,  and 
afterwards  claiming  it  as  his  invention,  made  it  the  foundation  of  a  patent. 


NOVELTY     AND     UTILITY.  43 

ceives  the  result  embraced  in  the  invention,  or  the  general  idea 
of  a  machine  upon  a  particular  principle,  and  in  order  to  carry 
his  conception  into  effect,  it  is  necessary  to  employ  manual 
dexterity,  or  even  inventive  skill,  in  the  mechanical  details  and 
arrangements  requisite  for  carrying  out  the  original  conception, 
in  such  cases  the  employer  will  be  the  inventor,  and  the  servant 
will  be  a  mere  instrument,  through  which  he  realizes  his  idea.' 
The  adoption  by  an  inventor,  of  a  suggestion  made  in  the 
course  of  experiments,  of  something  calculated  more  easily  to 
carry  his  conceptions  into  effect,  does  not  affect  the  validity  of 
the  patent.- 


The  same  fact  was  proved  as  to  a  crank,  which  had  been  discovered  by  a 
person  of  the  name  of  Hargrave,  which  also  had  been  adopted  by  Arkwright. 
This  evidence  was  fatal  to  the  patentee's  claim  of  originality  in  respect  of 
both  these  inventions.  The  King  v.  Arkwright,  Davis's  Pat.  Cas.  61  ; 
"Webs.  Pat.  Cas.  64.  See  also  Hill  v.  Thompson,  8  Taunt.  375,  395  ;  Bar- 
ker V.  Harris,  Webs.  Pat.  Cas.  126. 

»  Ibid.  See  also  Bloxam  v.  Elsee,  1  Car.  &  P.  567  ;  Dav.Pat.  Cas.  132. 
It  was  objected  in  this  case  that  parts  of  the  improvements  in  Foudrinier's 
paper  machine  were  the  inventions  of  Mr.  Doukin,  who  proved  that  when  he 
made  those  improvements  he  was  employed  as  an  engineer,  for  the  purpose 
of  bringing  the  machine  to  perfection,  and  was  paid  for  so  doing,  and  that 
he  was  acting  as  the  servant  of  the  inventor  of  the  machine,  for  the  purpose 
of  suggesting  those  improvements.  He  did  not  discover  the  principle  of  the 
machine,  nor  invent  the  important  movements  of  it.  The  patent  was  not 
disturbed  on  that  ground.  Godson  on  Patents,  27,  28;  Hindmarch  on 
Patents,  25,  26.  Upon  the  same  principle,  the  Court  of  Common  Pleas  in 
England  held  that  a  calico-printer  is  entitled,  after  having  discharged  his 
head  color-man,  to  the  book  in  which  that  servant  has  entered  the  processes 
for  mixing  the  colors  during  his  service,  although  many  of  the  processes 
were  the  invention  of  the  servant  himself.  Makepeace  v.  Jackson,  4  Taunt. 
770.  —  Mr.  Phillips,  in  his  valuable  work  on  Patents,  stales  the  doctrine  in 
regard  to  suggestions  thus  :  "  It  is  not  a  ground  of  defence  that  the  patentee 
availed  himself  of  the  suggestions  of  another,  unless  they  go  to  an  essential 
part  of  the  invention  :  "  —  p.  4 19,  edition  of  1837.  But  it  seems  to  be  capa- 
ble of  a  more  precise  statement. 

«  Allen  V.  Rawson,  1  M.  G.  &  Scott,  551,  574,  Tindall,  C.  J.  "  The 
real  question  is,  whether  or  not  the  improvements  suggested  by  Shaiv  and  by 
Milner  were  of  such  a  serious  and  important  character  as  to  preclude  their 
adoption  by   Williams  as  parts  of  his  invention.     The  rule  was  granted 


44  LAW     OF     PATENTS. 

«§,  50.  There  may  be  a  class  of  cases,  where  the  patentee  hav- 
inf^  employed  and  paid  for  the  inventive  faculty  of  another,  may 
claim  and  hold  a  patent  for  the  invention,  not  as  the  inventor,  but 
as  the  assignee  of  the  inventor.  But  this  class  of  cases  belongs  to 
the  subject  of  assignments  of  patents,  and  is  distinguishable  from 
the  general  principles  which  determine  who  is  the  actual  inventor. 

'5.  51.  With  regard  to  the  use  of  the  antecedent  experiments 
of  others,  Mr.  Justice  Story  has  intimated  that  our  law  would 
go  as  far  as  the  English  doctrine,  which  allows  an  inventor  to 
know  and  use  the  antecedent  experiments  of  others  in  perfecting 
his  invention.^    The  English  law  is,  that  experiment  not  brought 


simply  upon  the  objection  that  the  patentee  had  claimed  as  a  part  of  hi^ 
invention,  the  compound  apron  which  was  alleged  to  be  the  invention  of 
Shaw,  and  the  longitudinal  guides  invented  by  Milner.  And  the  question  is, 
whether,  having  so  claimed  these  two  things,  they  form  any  important  parts 
of  the  invention  for  which  the  patent  has  been  obtained.  The  main  object 
and  design  of  the  patentee  were  the  obtaining  a  long,  even  and  uniform  bat, 
suitable  to  be  made  into  commercial  ends  or  pieces  of  cloth.  The  patentee, 
in  his  specification,  after  describing  the  double  or  compound  revolving  apron, 
thus  refers  to  that  which  is  called  Shaw's  suggestion  :  —  "As  in  many  man- 
ufacturing premises,  these  two  long  extended  aprons  could  not  be  so  conven- 
iently used,  for  want  of  room,  I  sometimes  extend  them  backwards  and  for- 
wards, and  even  with  several  aprons,  as  shown  (in  the  drawings)  at  figures 
6,  7,  and  8,  or  perpendicularly  up  and  down,  where  only  two  are  required, 
as  shown  at  figures  9  and  10."  This  is,  obviously,  a  mere  matter  of  con- 
venience suggested  to  and  adopted  by  the  inventor.  It  would  be  difficult  to 
define  how  far  the  suggestions  of  a  workman  employed  in  the  construction  of 
a  machine  are  to  be  considered  as  distinct  inventions  by  him,  so  as  to  avoid  a 
patent  incorporating  them  taken  out  by  his  employer.  Each  case  must 
depend  upon  its  own  merits.  But,  when  we  see  that  the  principle  and 
object  of  the  invention  are  complete  without  it,  I  think  it  is  too  much  that  a 
suggestion  of  a  workman,  employed  in  the  course  of  the  experiments,  of 
something  calculated  more  easily  to  carry  into  effect  the  conceptions  of  the 
inventor,  should  render  the  whole  patent  void.  It  seems  to  me,  that  this 
was  a  matter  much  too  trivial  and  too  far  removed  from  interference  with  the 
principle  ol  tiie  invention,  to  produce  the  eflfect  which  has  been  contended 
for." 

'  Washburn  v.  Gould,  ut  supra  note,  p.  41,  42. 


NOVELTY    AND    UTILITY. 


45 


to  completion,  or  conducted  to  a  full  result,  will  not  vitiate  the 
patent  of  a  more  successful  person  in  the  same  line,  though  he 
avails  himself  of  the  knowledge  gained  by  the  experiments  of  his 
predecessors.^ 

<^  52.  The  Statute  of  1836  also  requires  that  the  subject  of 
the  patent  should  not  have  been,  at  the  time  of  the  application, 
in  public  use  or  on  sale,  with  the  consent  or  allowance  of  the 
patentee,  as  the  inventor  or  discoverer.- 

<§,  53.  The  phrase  "  public  use  "  means  use  in  public,  and 
not  use  by  the  public  ;  ^  so  that,  under  this  act,  if  there  had 


» In  Galloway  v.  Bleaden,  Webs.  Pat.  Cas.  525,  Sir.  N.  C.  Tindall,  C.  J. 
stated  the  law  to  be  that  "  a  mere  experiment,  or  a  mere  course  of  experi- 
ments, for  the  purpose  of  producing  a  result  which  is  not  brought  to  its  com- 
pletion, but  begins  and  ends  in  uncertain  experiments  —  that  is  not  such  an 
invention,  as  should  prevent  another  person,  who  is  more  successful,  or. 
pursues  with  greater  industry  the  chain  in  the  line  that  has  been  laid  out  for 
him  by  the  preceding  inventor,  from  availing  himself  of  it  and  having  the 
benefit  of  it." 

*  Act  of  1836,  ^  6.  The  law  had  previously  been  settled  to  be  that  the 
first  inventor  cannot  acquire  a  good  title  to  a  patent,  if  he  suffers  the  thing 
invented  to  go  into  public  use  or  be  publicly  sold  for  use,  before  he  makes 
application  for  a  patent.  Such  voluntary  act  or  acquiescence  in  the  public 
sale  or  use,  is  an  abandonment  of  his  right ;  or  rather,  creates  a  disability  to 
comply  with  the  terms  and  conditions  of  the  law  ;  on  which  alone  the  Sec- 
retary of  State  is  authorized  to  grant  a  patent.  Pennock  v.  Dialogue,  2 
Peters  16. 

'  "The  public  use  and  exercise  of  an  invention  means  a  use  in  public,  not 
by  the  public."  Per  Lord  Abinger  in  Carpenter  v.  Smith,  9  Mees.  &  Wels. 
300.  Webs.  Pat.  Cas.  530,  534.  I  possess  a  MS.  note  by  Mr.  Justice 
Story,  to  the  case  of  Wyeth  v.  Stone,  1  Story's  R.  273,  referring  to  this 
definition  of  public  use  with  approbation.  The  use  of  a  lock  in  such  a  situ- 
ation that  the  public  might  see  it,  is  a  public  use  and  exercise  of  the  invention . 
Carpenter  v.  Smith,  ut  supra.  The  manufacture  and  sale,  without  secrecy, 
by  a  workman,  of  several  dozens  of  locks,  according  to  a  model  which  is 
retained,  is  a  public  use  and  exercise  of  the  invention.  Ibid.  540.  The  pub- 
licly making  and  selling  an  article,  though  there  may  be  no  demand  or  use 
for  it  at  the  time,  will  vitiate  subsequent  letters  patent.  Losh  v.  Hague, 
Webs.  Pat.  Cas.  205.  The  question  of  public  use  is  for  the  jury  ;  as  whether 


46  LAW    OF     PATENTS. 

been  a  use  in  public  by  any  person,  with  the  consent  or  allow- 
ance of  the  patentee,  the  patent  will  be  defeated. 

{,  54.  But  then  it  is  necessary  that  the  machine  or  other  sub- 
ject of  invention  should  have  been  completed,  and  should  have 
been  used  in  public  substantially  as  it  was  patented,  with  the 
consent  of  the  patentee.^ 

<§,  55.  As  the  law  stood,  therefore,  prior  to  the  year  1839,  an 
invention  might  be  allowed  to  be  in  public  use,  by  the  patentee, 
before  his  application,  in  two  modes.  He  might  allow  of  its 
use  in  public  by  an  individual,  or  individuals,  or  he  might  allow 
the  whole  public  to  use  it,  by  having  abandoned,  or  dedicated 
his  invention  to  the  public,  before  his  application.  In  either 
case,  his  patent  would  have  been  void. 

<§>  56.  With  regard  to  the  first  mode,  where  the  use  had  been 
permitted  to  an  individual,  it  has  been  held  that  such  use  must 
have  been  unlimited  in  time  extent  or  object.  If  allowed  for  a 
short,  or  definite  period,  as  an  act  of  kindness,  or  as  a  means  of 
continuing  experiments  and  testing  the  utility  of  the  invention 
it  would  not  have  had  the  effect  of  defeating  the  patent  under 
the  act  of  1836.2 


the  instances  adduced  show  a  manufacture  to  have  been  in  public  use,  or  only 
that  various  experiments  had  been  made  and  abandoned.  Elliott  v.  Aston 
Webs.  Pat.  Cas.  224.     Cornish  v.  Keene,  Ibid.  519. 

*  Wyeth  V.  Stone,  1  Story's  R.  280,  281. 

*  Ibid.  Ryan  iJ.  Goodwin,  3  Sumner's  R.  514,518.  In  this  last  case 
Mr.  Justice  Slory  said,  "It  is  clear  by  our  law,  whatever  it  may  be  by  the 
law  of  England,  that  the  public  use  or  sale  of  an  invention,  in  order  to  deprive 
the  inventor  of  his  right  to  a  patent,  must  he  a  public  use  or  sale  by  others 
with  his  knowledge  and  consent,  before  his  application  therefor.  If  the  use 
or  sale  is  without  such  knowledge  or  consent,  or  if  the  use  be  merely  experi- 
mental to  ascertain  the  value  or  utility,  or  success  of  the  invention  by  putting 
it  in  practice,  that  is  not  such  a  use  as  will  deprive  the  inventor  of  his  title. 
Our  law  also  requires  that  the  use  or  sale  should  not  only  be  with  the  knowl- 
edge and  consent  of  the  inventor,  but  that  it  should  be  before  his  application 


NOVELTY    AND    UTILITY.  47 

<§.  57.  With  regard  to  the  second  mode,  a  dedication  or  aban- 
donment of  the  invention  to  the  public,  before  the  apphcation 
for  a  patent,  it  has  been  said  that  the  circumstances  ought  to  be 
very  clear  and  cogent,  before  the  court  would  be  justified  in 
adopting  a  conclusion  so  subversive  of  private  rights,  when  the 
party  has  subsequently  taken  out  a  patent.^  Still,  although  the 
inventor's  acts  are  to  be  construed  liberally,  unequivocal  evidence 
that  he  has  dedicated  his  invention  to  the  public  will  deprive 
him  of  his  right,  upon  the  authority  of  previous  decisions  as  well 
as  that  of  the  recent  statute  presently  to  be  cited.^ 


for  a  patent.  A  sale  or  use  of  it  with  such  knowledge  or  consent,  in  the 
intermediate  lime  between  the  application  for  a  patent  and  a  grant  thereof, 
has  no  such  effect.  It  furnishes  no  foundation  to  presume,  that  the  inventor 
means  to  abandon  his  invention  to  the  public  ;  and  does  not,  because  it  is  not 
within  the  words  of  our  act,  create  any  statute  disability  to  assert  his  right  to 
a  patent." 

*  Wyelh  V.  Stone,  ut  supra. 

"  Melius  V.  Silsbee,  4  Mas.  111.  In  this  case  Mr.  Justice  Story  said,  "  If 
the  inventor  dedicates  his  invention  to  the  public,  he  cannot  afterwards  re- 
sume it,  or  claim  an  exclusive  right  in  it.  It  is  like  the  dedication  of  a 
public  way  or  other  public  easement.  The  question  in  such  cases  is  a  ques- 
tion of  fact.  Has  he  so  dedicated  it?  I  agree  his  acts  are  to  be  construed 
liberally ;  that  he  is  not  to  be  estopped  by  licensing  a  few  persons  to  use  his 
invention  to  ascertain  its  utility,  or  by  any  such  acts  of  peculiar  indulgence 
and  use  as  may  fairly  consist  with  the  clear  intention  to  hold  the  exclusive 
privilege.  But  if  the  inventor  proclaims  his  intention  to  all  the  world,  and 
suffers  it  to  go  into  general  and  public  use,  without  objection  ;  if  he  asserts 
no  exclusive  right  fcyf  years,  with  a  full  knowledge,  that  the  public  are  led  by 
it  to  general  use,  such  conduct,  in  my  judgment,  amounts  to  strong  proof, 
that  he  waives  the  exclusive  right  and  dedicates  the  invention  to  the  world. 
After  such  conduct,  the  attempt  to  regain  the  exclusive  right  and  secure  it 
by  a  patent  would  operate  as  a  fraud  upon  the  public  ;  and  would  hold  out 
inducements  to  incur  heavy  expenses  in  putting  inventions  into  operation,  of 
which  the  party  might  be  deprived  at  the  mere  will  or  caprice  of  the  invent- 
or." So  also  Mr.  Justice  Washington  held,  "  That  if  an  inventor  makes  his 
discovery  public,  looks  on,  and  permits  others  freely  to  use  it,  without  ob- 
jection, or  assertion  of  claim  to  the  invention,  of  which  the  public  might  take 
notice,  he  abandons  the  inchoate  right  to  the  exclusive  use  of  the  invention 
to  which  a  patent  would  have  entitled  him,  had  it  been  applied  for  before 
such  use  ;  and  we  think  it  makes  no  difference  in  the  principle  that  the  article 


48  LAW    OF    PATENTS. 

<§,  58.  Prior  to  the  year  1839,  therefore,  if  the  patentee  al- 
lowed not  merely  the  public  use,  but  even  a  free  individual  use 
of  his  invention,  before  he  applied  for  a  patent,  his  patent  would 
be  invalid.  But  by  the  act  of  1839,  ch.  88,  *§>  7,  this  incon- 
venience was  remedied  by  the  enactment,  "  that  every  person 
or  corporation  who  has,  or  shall  have,  purchased  or  constructed 
any  newly  invented  machine,  manufacture  or  composition  of 
matter,  prior  to  the  application  by  the  inventor  or  discoverer  for 
a  patent,  shall  be  held  to  possess  the  right  to  use,  and  vend  to 
others  to  be  used,  the  specific  machine,  manufacture  or  compo- 
sition of  matter,  so  made  or  purchased,  without  liability  therefor 
to  the  inventor,  or  any  other  person  interested  in  such  invention  ; 
and  no  patent  shall  be  held  to  be  invalid  by  reason  of  such 
purchase,  sale  or  use,  prior  to  the  application  for  a  patent  afore- 
said, except  on  proof  of  abandonment  of  such  invention  to  the 


so  publicly  used,  and  afterwards  patented,  was  made  by  a  particular 
individual,  who  did  so  by  the  private  permission  of  the  inventor.  As  long 
as  an  inventor  keeps  to  himself  the  subject  of  his  discovery,  the  public  can- 
not be  injured  ;  and  even  if  it  be  made  public,  but  accompanied  by  an  asser- 
tion of  the  inventor's  claim  to  the  discovery,  those  who  should  make,  or  use 
the  subject  of  the  invention,  would  at  least  be  put  upon  their  guard.  But  if 
the  public,  with  the  knowledge,  and  the  tacit  consent  of  the  inventor,  is 
permitted  to  use  the  invention,  without  opposition,  it  is  a  fraud  upon  that 
public,  afterwards  to  take  out  a  patent.  It  is  possible  that  the  inventor  may 
not  have  intended  to  give  the  benefit  of  his  discovery  to  the  public  ;  and  may 
have  supposed  that,  by  giving  permission  to  a  particufar  individual  to  con- 
struct for  others  the  thing  patented,  he  could  not  be  presumed  to  have  done 
so.  But  it  is  not  a  question  of  intention  which  is  involved  in  the  principle 
which  we  have  laid  down,  but  of  legal  inference,  resulting  from  the  conduct 
of  the  inventor  and  affecting  the  interests  of  the  public.  It  is  for  the  jury  to 
say  whether  the  evidence  brought  this  case  within  the  principle  which  has 
been  stated."  4  Wash.  544.  The  question  which  generally  arises  on  trials 
is  a  question  of  fact,  rather  than  of  law,  whether  the  acts  or  acquiescence  of 
a  party  furnish,  in  a  given  case,  satisfactory  proof  of  an  abandonment  or 
dedication  of  the  invention  to  the  public.  See  Pennock  v.  Dialogue,  2 
Peters  16.  Grant  v.  Raymond,  6  Pet.  248,  249.  Shaw  v.  Cooper,  7  Pet. 
313  —  323.     McClung  v.  Kingsland,  1  Howard  202,  207. 


NOVELTY     AND    UTILITY.  49 

public ;  or  that  such  purchase,  sale  or  prior  use,  has  been  for 
more  than  two  years  prior  to  such  application  for  a  patent."  ^ 

^  59.  This  enactment  relieved  the  patentee  from  the  effect 
of  the  former  laws,  and  the  construction  that  had  been  put 
upon  them  by  the  courts,  and  put  the  person,  who,  by  the  con- 
sent and  allowance  of  the  inventor,  iiad  had  a  prior  use  of  the 
invention  on  the  same  footing,  as  if  he  had  a  special  license 
from  the  inventor  to  use  his  invention  ;  and  at  the  same  time, 
the  patent  is  valid,  after  it  is  issued,  against  all  persons,  except 
such  licensee,  who  will  continue  to  have  the  right  to  use  the  in- 
vention.^ Inventors  may  now,  therefore,  permit  the  use  of  their 
inventions,  by  individuals,  for  a  period  of  two  years,  prior  to  the 
application  for  a  patent,  and  still  obtain  a  valid  patent,  notwith- 
standing such  use.  But  if  the  use  thus  allowed  extends  over  a 
period  of  more  than  two  years  prior  to  the  application,  or  if  it 
amounts  to  an  abandonment  of  an  invention  to  the  public, 
whether  for  a  longer  or  a  shorter  period,  the  patent  will  be  in- 
valid. 

>§.  60.  But  to  entitle  a  person  to  claim  the  benefit  of  this  stat- 
ute, he  must  be  a  person  who  is  a  purchaser,  or  who  has  used 
the  patented  invention  before  the  patent  was  issued,  by  a  license 
or  grant,  or  by  the  consent  of  the  inventor,  and  not  be  a  pur- 
chaser under  a  mere  wronG;-doer.^     What  will  amount  to  such 


*  The  words  "  any  newly  invented  machine,  manufacture  or  composition 
of  matter  "  in  this  statute,  have  the  same  meaning  as  "  invention"  or  "  thing 
patented."     McCiurg  v.  Kingiland,  ut  supra. 

*  McClurg  V.  Kingsland,  ut  supra. 

*  Pierson  v.  The  Eagle  Screw  Company,  3  Story's  R.  402,  405.  In  this 
case  Mr.  Justice  Story  said,  "For  the  defendants  the  argument  is,  that  the 
Eagle  Screw  Company  had  a  right  to  use  the  machines  purchased  by  them 
from  Read  before  Crum's  patent  was  obtained,  although  Crum  was  the  prior 
and  true  inventor,  and  patentee  under  the  7th  section  of  the  Patent  Act  of 
1839,  ch.  88;  and  great  reliance  is  placed  upon  the  case  of  McClurg  v. 
Kingsland,  (1  How.  S.  C.  R.  202.)  In  my  opinion,  neither  the  Act  of  Con- 
gress, nor  the  case  of  McClurg  v.  Kingsland  justifies  such  a  doctrine.     Sup- 

5 


50  LAW     OF     PATENTS. 

a  license,  grant  or  consent,  is  well  shown  in  a  case  where  a 
person  employed  in  the  manufactory  of  another,  while  receiving 
wages,  made  experiments  at  the  expense  and  in  the  manufactory 
of  his  employer,  had  his  wages  increased  in  consequence  of  the 
useful  result  of  the  experiment,  made  the  article  invented,  and 
permitted  his  employer  to  use  it,  no  compensation  for  its  use 
being  paid  or  demanded,  and  then  obtained  a  patent ;  it  was 
held,  that  such  an  unmolested  and  notorious  use  of  the  inven- 
tion, prior  to  the  application  for  a  patent,  brought  the  case 
within  the  provisions  of  the  statute.^ 

posing  the  argument  to  be  well  founded,  what  would  be  the  legal  result? 
Why,  ihat  a  mere  wrong-doer,  who  by  fraud  or  artifice,  or  gross  misconduct, 
had  gotten  knowledge  of  the  patentee's  invention  before  he  could  obtain  his 
patent,  without  any  laches  on  his  part,  could  confer  upon  a  purchaser  under 
liini  —  bona  fide  and  without  notice —  a  title  to  the  patented  machine,  which 
he  himself  could  not  exercise  or  possess.  Certainly  there  is  no  ground  to 
say,  that  a  person  who  pirates  the  invention  of  any  party  prior  in  point  of 
time  and  right,  can  make  any  valid  claim  thereto  against  the  prior  and  true 
inventor.  How  then  can  he  confer  on  others  a  title,  which  he  himself  does 
not  possess?  Upon  general  principles,  the  assignee  can  ordinarily  claim  no 
more  than  his  assignor  can  lawfully  grant. 

But  it  is  said,  that  the  7th  section  of  the  Act  of  1839,  ch.  88,  declares, 
•'  That  every  person  or  corporation,  who  has  or  shall  have  purchased  or  con- 
structed any  newly  invented  machine,  manufacture  or  composition  of  matter, 
prior  to  the  application  by  the  inventor  or  discoverer  for  a  patent,  shall  be  held 
to  possess  the  right  to  use,  and  vend  to  others  to  be  used,  the  specific  ma- 
chine, manufacture  or  composition  of  matter,  so  made  or  purchased,  without 
liability  therefor  to  the  inventor,  or  any  other  person  interested  in  the  inven- 
tion ;  and  no  patent  shall  be  held  to  be  invalid  by  reason  of  such  purchase, 
sale  or  use,  prior  to  the  application  fur  a  patent  as  aforesaid,  except  on  proof 
of  abandonment  of  such  invention  to  the  public,  or  that  such  purchase,  sale 
or  prior  use,  has  been  for  more  than  two  years  prior  to  such  application  for 
a  patent."  Certainly,  the  language  in  the  first  clause  of  this  section  is  very 
general,  not  to  say  loose,  in  its  texture.  But  if  it  stood  alone,  a  first  inter- 
pretation of  it  might  fairly  lead  to  the  conclusion,  that  the  purchaser  there 
spoken  of  was  a  purchaser,  not  from  a  mere  wrong-doer,  but  from  the  first  and 
true  inventor  before  he  had  obtained  his  patent.  The  language  of  the  clause 
does  not  even  include  the  qualification  that  the  purchaser  should  be  a  bona 
fide  purchaser,  for  a  valuable  consideration,  without  notice  of  the  claim  or 
'  McClurgi).  Kingsland,  1  Howard  202. 


NOVELTY     AND    UTILITY.  51 

<§>  61.  But  the  further  consideration  of  the  subjects  of  license 
and  abandonment  belongs  to  another  part  of  this  treatise. 


title  of  the  inventor,  or  of  any  fraud  of  the  vendor  upon  that  claim  or  title. 
Yet,  surely,  it  could  never  have  been  the  intention  of  this  clause,  to  confer 
on  a  fraudulent  purchaser,  or  a  purchaser  with  full  notice,  a  right  to  use 
an  invention  pirated  from  the  original  inventor,  by  wrong.  If,  on  the  other 
hand,  we  interpret  the  language  to  mean  a  purchaser  from  the  inventor  him- 
self, before  his  application  for  a  patent,  the  omission  of  such  qualifying 
words  is  at  once  material  and  consistent  with  the  apparent  objects  of  the 
section.  But  the  remaining  clauses  of  this  section  render  this  interpretation 
perfectly  clear  and  right.  These  clauses  point  solely  to  the  inventor,  and 
demonstrate  that  the  purchaser  before  spoken  of,  was  a  purchaser  from  the 
inventor  himself.  The  language  is,  "  and  no  patent  shall  be  held  to  be  in- 
valid by  reason  of  any  such  purchase,  sale  or  use,  prior  to  the  application 
for  a  patent,  as  aforesaid,  except  on  proof  of  an  abandonment  of  such  inven- 
tion to  the  public."  Now  the  inventor,  and  the  inventor  alone,  is  compe- 
tent to  abandon  his  invention  to  the  public,  and  no  use  by  the  public,  except 
with  his  knowledge  and  consent,  can  be  deemed  an  abandonment  of  his  in- 
vention to  the  public.  It  is,  therefore,  put  as  an  exception  carved  out  of  the 
preceding  words  ;  and  if  the  purchase,  sale  or  prior  use,  were  from  or  under 
the  inventor,  and  with  his  consent  and  knowledge,  the  exception  would  have 
its  appropriate  effect.  It  is  an  exception,  ejusdem  generis.  The  clause 
would  then  read,  in  legal  effect  thus  —  the  patent  shall  not  be  held  invalid 
by  reason,  that  the  inventor  has  sold  or  allowed  his  invention  to  be  used  prior 
to  the  application  for  a  patent,  unless  he  has  abandoned  it  to  the  public. 
Then  follows  the  remaining  clause  :  "  Or  that  such  purchase,  sale  or  prior 
use,  has  been  for  more  than  two  years  prior  to  such  application  for  a  patent ;  " 
which  also  imports  another  exception,  limiting  the  right  to  make  application 
for  a  patent  to  the  period  of  two  years  after  the  inventor  has  sold  or  allowed 
his  invention  to  be  used  by  others.  Any  other  construction  of  these  clauses, 
would  lead  to  this  extraordinary  conclusion,  that  the  inventor  would  be  de- 
prived of  the  benefit  of  his  invention,  and  his  right  to  a  patent  without  any 
laches  or  misconduct  on  his  own  part,  by  the  mere  acts  of  a  wrongdoer, 
without  his  knowledge  or  against  his  will  ;  and  the  exceptions,  in  a  practical 
sense,  would  become  nullities.  But  construed,  as  we  construe  them,  and 
they  have  a  plain,  appropriate  and  satisfactory  meaning.  This  view  of  the 
matter  is  in  entire  coincidence  with  the  whole  theory  and  enactments  of  all 
the  other  Patent  Acts,  and  with  the  judicial  interpretations  which  have  been 
constantly  put  upon  them.  It  has  been  the  uniform  doctrine  of  the  courts 
of  the  United  States,  that  no  fraudulent  or  wrongful  use  of  an  invention, 
and  no  public  use  without  the  consent  or  knowledge,  or  sanction  of  the  in- 
ventor, would  deprive  him  of  his  right  to  a  patent. 


52  LAW     OF     PATENTS. 

<§»  6'2.  The  novelty  required  by  our  law  relates  not  merely  to 
previous  inventions  made  in  this  country,  but  to  inventions  made 

The  case  of  McClurg  v.  Kingsland,  (1  How.  Sup.  Ch.  R.  202)  properly 
considered,  contains  nothing  in  contlict  with  this  doctrine.      The   learned 
judge  (Mr.  Justice  Baldwin)  who  delivered  the  opinion  of  the  court,  in  com- 
menting upon  the  7ih  section  of  the  Act  of  1839,  said  :  "  The  object  of  this 
provision  is  evidently  twofold;  first,  to  protect  the  person,  who  used  the 
thino-  patented    by   having  purchased,  constructed   or    used    the   machine, 
&c.'to  which  the  invention  is  applied,  from  any  liability  to  the  patentee  or 
his  assignee  :  second,  to  protect  the  rights  granted  to  the  patentee  against 
any  infringement  by  any  other  persons."     This  language  is  certainly  general, 
but  then,  in  order  to  understand  it  correctly,  we  must  apply  it  to  the  very 
case  then  before  the  court  ;  and  in  this  view  it  was  perfectly  accurate  and 
appropriate.     What  was  that  case?     It  was  a  case  where  the  patentee,  be- 
fore he  obtained  his  patent,  allowed  the  defendants  to  use  for  their  own  profit, 
the  very  improvements  invented  by  him  ;  and  indeed,  the  improvement  was 
invented  by  the  patentee  while  he  was  in  their  employment,  and  receiving 
wages  from  them,  and  he  freely  allowed  them  to  use  it.     Afterwards,  the 
assignee  of  the  patentee  brought  the  suit  against  the  defendants  for  using  the 
improvement  after  the  patent  was  granted.     The  Circuit  Court  held  that  the 
facts  justified  the  jury   in   presuming,  that  the  defendants  used  the  improve- 
ment under  a  license  or  privilege  originally  granted  to  them  by  the  inventor, 
and  that  the  facts  of  the  case  brought  it  directly  within  the  7th  section  of  the 
Act  of  1839.     Mr.  Justice  Baldwin  presided  in  the  Circuit  Court  at  the  trial, 
and  he  also  delivered  the  opinion  of  the  Supreme  Court.     So  that,  putting 
both  opinions  together  on  the  points  in  controversy,  it  is  plain,  that  the 
learned  judge,  by  the  language  above  stated,  meant  to  affirm  no  more  than 
that  where  the  invention  had,  before  the  patent,  been  used  under  a  license  or 
grant  of  the  patentee,  that  license  or  grant  being  a  purchase  or  sale,  or  use 
with  the  consent  of  the  patentee,  was  within  the  provision  of  the  7th  section 
of  the  Patent  Act  of  1839.     It  seems  to  us,  that  no  reasonable  objection 
exists  to  this  doctrine  ;  and  it  is  in  conformity  to  and  in  illustration  of  the 
very  doctrine  already  stated  by  us  as  the  true  meaning  of  the  section. 

Indeed,  the  context  immediately  following  the  passage  here  cited  from  the 
opinion  of  the  learned  judge,  shows  this  to  have  been  his  meaning.  In  the 
former  part  of  the  opinion,  he  had  endeavored  to  show  that,  under  the  prior 
Acts  of  Congress,  if  the  patentee  allowed  not  merely  the  public  use,  but 
even  a  free  individual  use  of  his  invention  before  he  obtained  a  patent,  that 
would  deprive  him  of  his  right  to  a  patent  ;  and  that  the  7th  section  of  the 
Act  of  1839,  was  intended  to  cure  this  inconvenience  and  defect  in  the  law. 
"  This  "  [section]  says  the  learned  judge,  "  relieved  him  (the  patentee)  from 
the  effect  of  the  former  laws  and  their  constructions,  by  this  Court,  &c.,  &c. 


NOVELTV    AND    UTILITY.  53 

anywhere  in  the  world.  The  invention  must  be  absolutely  and 
not  relatively  new.  It  must  not  have  been  known  or  used  any- 
where, and  not  described  in  any  public  work.^ 

<§.  63.  But  there  is  an  important  proviso,  introduced  into  the 
statute,  which  declares  that  whenever  it  shall  satisfactorily 
appear  that  the  patentee,  at  the  time  of  making  his  application 
for  the  patent,  believed  himself  to  be  the  first  inventor  or 
discoverer  of  the  thing  patented,  the  same  shall  not  be  held  to 
be  void  on  account  of  the  invention  or  discovery,  or  any  part 
thereof,  having  been  before  known  or  used  in  any  foreign  coun- 
try, it  not  appearing  that  the  same  or  any  substantial  part  thereof 
had  before  been  patented  or  described  in  any  printed  publica- 
tion.^ So  that,  as  the  law  now  stands,  an  inventor  who  does 
not  borrow  from  a  foreign  discovery,  that  is,  who  believes  himself 
to  be  the  first  inventor  or  discoverer  of  the  thing  patented,  can 
only  be  deprived  of  the  benefit  of  his  patent,  by  showing  that 
the  thin^  had  been  before  patented,  or  described  in  some  printed 
publication.  It  will  not  be  enough  to  show  that  the  thing  had 
been  known  or  used  in  a  foreign  country,  if  it  had  not  been 
patented,  or  described  in  a  printed  publication. 

<§>  64.  Thus,  while  the  recent  statute  still  continues  the  pre- 
sumption that  the  patentee  has  seen  the  prior  description  con- 
tained in  a  printed    publication,  and  makes  that  presumj)tion 


while  it  puts  the  person  who  has  had  such  prior  use  on  the  same  fooling,  as 
if  he  had  a  special  license  from  the  inventor  to  use  his  invention  ;  which,  if 
given  before  the  application  for  a  patent,  would  justify  the  continued  use  after 
it  issued  without  liabi]it^^"  So  that  here  we  have  expressed  in  a  pointed 
manner,  the  true  object  and  intent  of  the  7th  section  of  the  Act  of  1839, 
which  was  to  give  validity  to  the  patent,  and  yet  to  secure  to  a  purchaser 
from  him  before  the  patent,  the  same  right  to  use  the  same  after  the  patent 
which  he  previously  possessed." 

'  Shaw  V.  Cooper,  7  Peters,  292.  Dawson  r.  Follen.  2  Washington,  311. 
Act  of  1836,  ^  15. 

'  Act  of  1836,  ^  15. 

5* 


54  LAW    OF     PATENTS. 

conclusive/  it  relieves  an  original  inventor  from  the  same  pre- 
sumption, arising  out  of  the  mere  previous  knowledge  or  use  of 
the  thing  in  a  foreign  country  where  it  had  not  been  patented 
or  described ;  and  if  he  can  take  the  oath  that  he  discovered  or 
invented  the  thing,  he  will  not  be  debarred  of  his  patent,  by  a 
prior  invention  or  discovery  and  secret  use  of  the  thing,  in  a 
foreign  country.- 

<§>  65.  No  judicial  construction  has  yet  been  given  to  the 
phrases,  ''described  in  some  public  work"  and  "described  in 
any  printed  publication."  It  has  been  suggested  by  a  learned 
writer,  that  the  courts  would  not,  probably,  require  that  the 
description  in  a  public  work  should  fully  answer  as  a  specification, 
but  would  require  that  it  should  serve  as  a  direction  for  making 
or  doing  the  thing  to  which  the  description  related,^  It  also 
remains  to  be  determined  what  is  to  be  considered  as  a  "  public 
work,"  or  "  printed  publication." 

<§)  66.  It  remains  to  be  stated,  that  the  consideration  upon 
which  a  patent  is  granted,  is  the  novelty  of  every  material  thing, 
process,  or  part  of  the  invention,  included  in  the  subject-matter, 
that  is  represented  as  a  substantial  and  material  part  thereof; 
that  this  consideration  is  an  entirety,  and  consequently,  that  if 
any  part  of  it  fails,  the  patent  is  invalid.  This  consequence 
results  from  the  general  principles  of  law  which  govern  grants 
by  the  public,  and  these  principles  are  recognized  by  the  statute, 
which  establishes  as  one  of  the  defences  to  an  action  on  a  patent 


•  Upon  the  former  law,  the  Supreme  Court  of  the  United  States  said  "  It 
may  be  that  the  patentee  had  no  knowledge  of  this  previous  use  or  previous 
description  ;  still  his  patent  is  void  ;  the  law  supposes  he  may  have  known 
it."     Evans  v.  Eaton,  3  Wheat.  514. 

'  The  text  was  written  before  the  opinion  on  this  point  lately  given  by  the 
Attorney-General  of  the  United  States,  under  date  of  August  30,  1848,  which 
confirms  my  construction  of  the  Statutes. 

'  Phillips  on  Patents,  175. 


NOVELTY    AND     UTILITY.  55 

"  that  the  patentee  was  not  the  original  and  first  inventor  or 
discoverer  of  the  thing  patented,  or  of  a  substantial  and  material 
part  thereof  claimed  as  new."  ^ 

<§>  67.  So  also,  in  respect  of  utility,  if  a  patent  contains  more 
than  is  necessary  to  produce  the  described  effect,  and  the  addi- 
tion was  made  for  the  purpose  of  deceiving  the  public,  it  will  be 
invalid  ;^  and  if  the  whole  patent  fails  to  produce  the  described 
effect,  no  action  can  be  maintained  upon  it.-^ 


'  Act  of  July  4lh,  1836,  §  15.  See  further,  as  to  the  failure  of  the  patent 
in  whole  or  in  part,  in  respect  to  novelty,  post,  in  the  chapter  on  Infringe- 
ment. As  to  the  mode  of  remedying  these  defects,  See  post,  in  the  chapter 
on  Renewal  of  Patents,  and  in  the  chapter  on  Defences. 

«  Act  of  July  4th,  1836,  §  15. 

'  See  post  in  the  chapter  on  Infringement. 


CHAPTER   II. 

THE    SUBJECT    OF    INVENTION    OR    DISCOV^ERY. 

*§,  68.  The  Act  of  Congress  of  July  4,  1836,  ch.  357,  <§>  6, 
declares  the  subject  of  letters-patent  to  be  "  any  new  and  useful 
art,  machine,  manufacture  or  composition  of  matter,  or  any  new 
and  useful  improvement  on  any  art,  machine,  manufacture  or 
composition  of  matter."  In  the  preceding  chapter,  we  have 
considered  the  qualifications  of  novelty  and  utility,  with  reference 
to  all  these  subjects ;  and  we  have  now  to  treat  of  the  several 
subjects  themselves. 

<§>  69.  In  England,  the  Statute  of  Monopolies  made  the  subject- 
matter  of  letters-patent  "  the  sole  working  or  making  of  any 
manner  of  new  manufactures  within  this  realm."  It  has  been 
doubted  whether  the  employment  of  other  phrases  has  had  any 
great  tendency  to  elucidate  the  subject.  Language  may  be 
inadequate  to  express  all  the  minute  distinctions  which  present 
themselves,  in  considering  what  may,  consistently  with  the  pur- 
poses and  objects  of  the  Patent  Law,  be  the  subject  of  a  patent. 
But  whether  we  have  or  have  not  gained  anything  in  point  of 
precision  and  certainty,  by  the  enumeration  in  our  statute,  per- 
haps we  have  not  enlarged  the  subjects  of  patents  beyond  the 
general  scope  of  the  English  law,  as  judicially  expounded.  At 
least,  the  English  exposition  of  the  term  "  manufactures"  will 
help  us  to  understand  what  is  intended  by  the  classification  in 
our  own  statute. 

t 
<§.  70.     The  cardinal  principle,  which  lies  at  the  foundation  of 


INVENTION    OR    DISCOVERY. 


57 


the  patent  law  in  England,  as  well  as  in  this  and  most  other 
countries,  is,  that  whatever  be  the  character  of  the  subject-mat- 
ter, or  the  way  in  which  it  is  described,  the  result  must  be  an 
effect  produced  in  manufactured,  as  distinguished  from  element- 
ary matter.^  The  subject-matter  of  a  patent  may  be  either  a 
thing  produced  or  the  mode  of  producing  a  thing;  but  it  must 
be  the  one  or  the  other,  and  can  never  be  a  new  discovery  of  an 
elementary  principle,  without  practical  application  to  the  pro- 
duction of  some  particular  effect  in  matter.  This  fundamental 
rule  is  deducible  not  only  from  the  meaning  of  the  term  "  manu- 
facture," which  cannot  be  made  to  mean  anything  that  does  not 
result  in  manufactured  matter  in  some  way  —  but  also  from  ihe 
general  scope  and  spirit  of  the  patent  law,  which  was  not 
designed  to  create  monopolies  in  abstract  principles  or  theoretical 
discoveries,  but  to  promote  the  arts  and  manufactures  of  the 
country.^ 

'  "All  invention,  whatever  its  object,  will  consist  in  new  applications,  or 
adaptations.  Matter  is  endowed  with  certain  properties,  and  subject  to  cer- 
tain laws ;  man  cannot  alter  these  properties  or  impose  other  laws,  but  he 
has  the  power  of  applying  those  properties  and  of  giving  occasion  for  the 
exercise  of  those  laws  according  to  his  will,  and  the  result  of  the  exercise  of 
that  will,  is  exhibited  in  manufactured  as  distinguished  from  elementary  mat- 
ter." Webster  on  the  Subject-Matter  of  Letters  Patent  for  Inventions,  (Lon- 
don, 1841,)  p.  7. 

'  "  Now  the  word  '  manufactures  '  has  been  generally  understood  to  denote 
either  a  thing  made,  which  is  useful  for  its  own  sake,  and  vendible  as  such, 
as  a  medicine,  a  stove,  a  telescope  and  many  others,  or  to  mean  an  engineer 
instrument,  or  some  part  of  an  engine  or  instrument,  to  be  employed,  either 
in  the  making  of  some  previously  known  article,  or  in  some  other  useful  pur- 
pose, as  a  stocking-frame,  or  a  steam  engine  for  raising  water  from  mines. 
Or  it  may  perhaps  extend  also  to  a  mere  process,  to  be  carried  on  by  known 
implements  or  elements,  acting  upon  known  substances,  and  ultimately  pro- 
ducing some  other  known  substance,  but  producing  it  in  a  cheaper  or  more 
expeditious  manner,  or  of  a  better  or  more  useful  kind.  But  no  merely 
philosophical  or  abstract  principle  can  answer  to  the  word  manufactures. 
Something  of  a  corporeal  and  substantial  nature,  something  that  can  be  made 
by  man  from  the  matters  subjected  to  his  art  and  skill,  or  at  the  least,  some 
new  mode  of  employing  practically  his  art  and  skill,  is  requisite  to  satisfy 
this  word.  A  person,  therefore,  who  applies  to  the  crown  for  a  patent,  may 
represent  himself  to  be  the  inventor  of  some  new  thing,  orof  some  new  engine 


58  LAW    OF     PATENTS. 

>§,  71.  But,  subject  to  this  restriction,  the  words  "any  manner 
of  new  manufacture  "  in  the  Statute  of  MonopoHes,  have  received 
in  construction  a  comprehensive  import.  According  to  the  con- 
struction of  the  Courts,  the  word  manufacture  is  used  in  the 
statute  in  a  Uteral  and  a  figurative  sense.  It  is  used  in  a  hteral 
sense,  because  it  clearly  includes  any  species  of  new  manu- 
factured article,  or  tangible  product  of  industry  ;  or  a  new 
machine,  the  construction  or  production  of  which,  as  an 
arrangement  of  matter,  is  the  result  at  which  the  inventor  aims. 
But  when  it  is  extended  to  include  the  mode  of  producing  an 
old  or  well  known  substance,  or  an  old  and  well  known  efTect 
upon  matter,  by  a  new  method  or  process,  it  seems  to  be  used 
in  a  sort  of  figurative  sense  ;  because,  in  such  cases  it  is  the  meth- 
od or  process  of  producing  the  thing  or  the  effect,  that  is  new  and 
is  the  real  subject  of  the  invention,  and  the  manufacture,  or  the 
result  attained  in  matter  is  then  made  to  stand  in  the  place  of 
the  new  method  or  process  of  attaining  it. 

<§.  72.  Thus,  "  manufacture  "  has  been  defined  to  be  "  some- 
thing made  by  the  hand  of  man  ;  "  ^  and  it  has  also  been  held 
to  include  the  practice  of  making  a  thing  or  of  producing  a  re- 

or  instrument.  And  in  the  latter  case  he  may  represent  himself  to  be  the 
inventor  of  a  new  method  of  accomplishing  that  object,  which  is  to  be  accom- 
plished by  his  new  engine  or  instrument,  as  was  the  case  of  WaWs  Patent, 
in  which  he  represented  himself  to  be  the  inventor  of  a  new  method  of  les- 
sening the  consumption  of  steam  and  fuel  in  fire  engines,  and  by  his  specifi- 
cation he  described  certain  parts  to  be  used  in  the  construction  of  fire  engines. 
Or  supposing  a  new  process  to  be  the  lawful  subject  of  a  patent,  he  may 
represent  himself  to  be  the  inventor  of  a  new  process,  in  which  case  it  should 
seem  that  the  word  "  method  "  may  be  properly  used  as  synonymous  with 
process.  The  language  of  the  patent  may  be  explained  and  reduced  to  cer- 
tainty by  the  specification  ;  but  the  patent  must  not  represent  the  party  to  be 
the  inventor  of  one  thing,  and  the  specification  show  him  to  be  the  inventor 
of  another,  because,  perhaps,  if  he  had  represented  himself  as  the  inventor  of 
that  other,  it  might  have  been  well  known  that  the  thing  was  of  no  use,  or 
was  in  common  use,  and  he  might  not  have  obtained  a  grant  as  the  inventor 
of  it."     The  King  v.  Wheeler,  2  B.  &  Aid.  349,  350. 

'  Per  Lord  Kenyon,  in  Hornblower  v.  Boulton,  8  T.  R.  99. 


INVENTION    OR    DISCOVERY.  59 

sult.^     As  in  Watt's  patent  for  "  a  method  of  lessening  the  con- 


'  "  It  was  admitted  at  the  argument  at  the  bar,  that  the  word  *  manufacture ' 
in  the  statute,  was  of  extensive  signification,  that  it  applied  not  only  to  things 
made,  but  to  the  practice  of  making,  to  principles  carried  into  practice  in  a 
new  manner,  to  new  results  of  principles  carried  into  practice.   Let  us  pursue 
this  admission.     Under  things  made,  we  may  class  in  the  first  place,  new 
compositions  of  things,  such  as  manufactures  in   the  most  ordinary  sense  of 
the  word  ;  secondly,  all  mechanical  inventions,  whether  made  to  produce  old 
or  new  effects,  for  a  new  piece  of  mechanism  is  certainly  a  thing  made. 
Under  the  practice  of  making  we  may  class  all  new  artificial  manners  of  ope- 
rating with  the  hand,  or  with  instruments  in  common  use,  new  processes  in 
any  art,  producing  effects  useful  to  the  public.     When  the  effect  produced  is 
some  new  substance  or  composition  of  things,  it  should  seem  that  the  privi- 
lege of  the  sole  working  or  making  ought  to  be  for  such  new  substance  or 
composition,  without  regard  to  the  mechanism  or  process  by  which  it  has 
been  produced,  which,  though  perhaps  also  new,  will  be  only  useful  as  pro- 
ducing the  new  substance.      Upon  this  ground  Dolland's  patent  was  perhaps 
exceptionable,  for  that  was  for  a  method  of  producing  a  new  object  glass, 
instead  of  being  for  the  object  glass  produced.    If  Dr.  James's  patent  had  been 
for  his  method  for  preparing  his  powders,  instead  of  the  poivders  themselves, 
that  patent  would  have  been  exceptionable  upon  the  same  ground.     When 
the  effect  produced  is  no  substance  or  composition  of  things,  the  patent  can 
only  be  for  the  mechanism,  if  new  mechanism  is  used,  or  for  the  process,  if 
it  be  a  new  method  of  operating,  with  or  without  old  mechanism,  by  which 
the  effect  is  produced.    To  illustrate  this.    The  effect  produced  by  Mr.  David 
Hartley's  invention  for  securing  buildings  from  fire,  is  no  substance  or  com- 
position of  things,  it  is  a  mere  negative  quality,  the  absence  of  fire.     This 
effect  is  produced  by  a  new  method  of  disposing  iron  plates  in  buildings.     In 
the  nature  of  things  the  patent  could  not  be  for  the  effect  produced.     I  think 
it  could   not  be  for  making  the  plates  of  iron,  which,  when  disposed  in   a 
particular  manner  produced  the  effect ;  for  those  are  things  in  common  use. 
But  the  invention  consisting  in  the  method  of  disposing  those  plates  of  iron,  so 
as  to  produce  their  effect,  and  that  effect  being  a  useful  and  meritorious  one, 
the  patent  seems  to  have  been  very  properly  granted  to  him  for  his  method  of 
securing  buildings  from  fire.     And  this  compendious  analysis  oi  neiv  man- 
ufactures mentioned  in  the  statute,  satisfies  my  doubt  whether  anything  could 
b3  the  subject  of  a  patent,  but  something  organized  and  capable  of  precise 
specification.    But  for  the  more  satisfactory  solution  of  the  other  points,  which 
are  made  in  this  case,  I  shall  pursue  this  subject  a  little  further.     In  Mr. 
Hartley's  method,  plates  of  iron  are  the  means  which  he  employs  ;  but  he  did 
not  invent  those  means,  the  invention  wholly  consisted  in  the  new  manner  of 
using,  or  I  would  rather  say  of  disposing  a  thing  in  common  use,  and  which 


60  LAW    OF    PATENTS. 

sumption  of  steam  and  fuel  in  fire  engines,"  which  was  held, 
after  great  consideration,  to  be  a  good  subject-matter.^  The 
distinction  to  which  this  case  gave  rise,  and  which  greatly  ex- 
tended the  meaning  of  the  term  "  manufacture,"  is  this  :  that 
although  a  principle,  or  a  rule  in  mechanics,  or  an  elementary 
truth  in  physics  cannot  be  the  subject  of  a  patent,  yet  a  new 
principle,  rule,  or  truth,  developed,  carried  out  and  embodied  in 
the  mode  of  using  it,  may  be  the  subject  of  a  patent.  A  mere 
principle  is  an  abstract  discovery,  incapable  of  answering  the 
term  "  manufacture  ;  "  but  a  principle  so  far  embodied  and  con- 
nected with  corporeal  substances,  as  to  be  in  a  condition  to  act 
and  to  produce  effects  in  any  art,  trade,  mystery  or  manual 
occupation,  becomes  the  practical  manner  of  doing  a  particular 


every  man  might  make  at  his  pleasure,  and  which  therefore,  I  repeat,  could 
not,  in  my  judgment,  be  the  subject  of  the  patent.  In  the  nature  of  things 
it  must  be,  that  in  the  carrying  into  execution  any  new  invention,  use  must 
be  made  of  certain  means  proper  for  the  operation.  Manual  labor,  to  a  cer- 
tain degree  must  always  be  employed  :  the  tools  of  artists  frequently  ;  often 
things  manufactured,  but  not  newly  invented,  such  as  Hartley's  iron  plates  ; 
all  the  common  utensils  used  in  conducting  any  process,  and  so  up  to  the 
most  complicated  machinery  that  the  art  of  man  ever  devised.  No'w  let  the 
merit  of  the  invention  be  what  it  may,  it  is  evident  that  the  patent  in  almost 
all  these  cases  cannot  be  granted  for  the  means  by  which  it  acts,  for  in  them 
there  is  nothing  new,  and  in  some  of  them  nothing  capable  of  approbation. 
Even  where  the  most  complicated  machinery  is  used,  if  the  machinery  itself 
is  not  newly  invented,  but  only  conducted  by  the  skill  of  the  inventor,  so  as 
to  produce  a  new  effect,  the  patent  cannot  be  for  the  machinery.  In  Hart- 
ley's case  it  could  not  be  for  the  effect  produced,  for  the  effect,  as  I  have 
already  observed,  is  merely  negative,  though  it  was  meritorious.  In  the  list 
of  patents  with  which  I  have  been  furnished,  there  are  several  for  new 
methods  of  manufacturing  articles  in  common  use  where  the  sole  merit  and 
the  whole  effect  produced,  are  the  saving  of  lime  and  expense  and  thereby 
lowering  the  price  of  the  article  and  introducing  it  into  more  general  use. 
Now  I  think  these  methods  may  be  said  to  be  new  manufactures,  in  one  of  the 
common  acceptations  of  the  word,  as  we  speak  of  the  manufactory  of  glass 
or  any  other  thing  of  that  kind."  Per  Eyre,  C.  J.  in  Boulton  v.  Bull,  2  H. 
Bl.  492. 

'  Boulton  V.  Bull,  ut  supra.     Hornblower  v.  Boulton,  ut  supra. 


INVENTION    OR    DISCOVERY.  61 

thing.  It  is  no  longer  a  principle  but  a  process.^  Mr.  Watt's 
invention  was  the  discovery  of  a  practical  means  of  lessening 
the  consumption  of  steam,  by  protecting  the  cylinder  from  the 
external  air,  and  keeping  it  at  a  temperature  not  below  that  of 
steam  itself.  He  thus  brought  a  principle  into  practical  appli- 
cation, by  the  invention  of  a  process. 

<§.  73.  In  like  manner,  a  patent  for  the  application  of  the 
flame  of  gas,  instead  of  the  flame  of  oil,  to  remove  the  superflu- 
ous fibres  of  lace,  was  sustained.-  So  too,  where  the  invention 
consisted  in  the  use  and  application  of  lime  and  mine-rubbish  in 
the  smelting  of  iron,  Lord  Eldon  said,  there  might  be  a  patent 
for  a  new  combination  of  materials  previously  in  use  for  the 
same  purpose,  or  for  a  new  method  of  applying  such  materials.^ 
But  this  distinction  has  been  made  still  more  prominent  by  two 
recent  cases.  In  one,  the  patent  was  for  the  application  of 
anthracite  combined  with  hot  air  blast  in  the  smelting  or  manu- 
facture of  iron  from  iron  stone,  mine  or  ore  ;  and  the  patent 
was  sustained.^  In  the  other,  the  invention  was  of  a  mode  of 
welding  iron  tubes,  without  the  use  of  a  maundril,  or  any  inter- 
nal support ;  and  this  patent  was  also  sustained.^ 

<§>  74.  These  cases  show  that  the  term  manufacture  has  been 
extended  to  include  every  object  upon  which  art  or  skill  can  be 
exercised,  so  as  to  aflbrd  products  fabricated  by  the  hand  of 
man,  or  by  the  labor  which  he  directs.*^  In  this  sense  it  includes 
a  process :  so  that  a  patent  may,  it  is  said,  be  taken  for  a  pro- 
cess, method,  or  practical  application  of  a  principle,  that  will 


'  See  the  remarks  of  Eyre  C.  J.,  ante. 

*  Hall  V.  Jervis,  Webs.  Pat.  Cas.  100. 

3  Hill  V.  Thompson,  3  Mer.  626  ;  Webs.  Pat.  Cas.  237.  In  Morgan  v.  Sea- 
ward, 2  Mees.  &  W.  544,  Mr.  Baron  Parke  said,  "  The  word  manufacture 
in  the  statute  must  be  construed  one  of  two  ways  ;  it  may  mean  the  machine 
when  completed,  or  the  mode  of  constructing  the  machine. 

*  Crane  v.  Price,  Webs.  Pat.  Cas.  393,  408. 

*  Russell  r.  Cowley,  Webs.  Pat.  Cas.   459. 

*  Webster's  Law  and  Practice,  Supplement,  p.  8. 

6 


62  LAW     OF    PATENTS. 

cover  every  means  or  apparatus,  by  which  that  process  or 
method  can  be  carried  on,  or  by  which  that  principle  can  be 
appHed,  provided  the  patentee  has  not  only  discovered  the  prin- 
ciple, but  has  also  invented  some  mode  of  carrying  it  into 
effect.^ 

^  74.  a.  But  it  is  necessary  here  to  consider  the  broad  ques- 
tion, what  constitutes  a  patentable  subject,  before  we  attend  to 
the  classification  of  patentable  subjects  adopted  by  our  statute. 

^  75.  It  is  constantly  to  be  borne  in  mind,  in  considering  what 
may  be  the  subject  of  a  valid  patent,  that  it  cannot  be  a  mere 
elementary  principle,  or  intellectual  discovery  ;  but  if  a  princi- 
ple constitutes  an  important  part  of  the  discovery  it  must  be  a 
principle  put  in  practice  and  applied  to  some  art.^  A,  science, 
therefore,  or  an  elementary  principle  or  discovery  in  science 
cannot  be  the  subject  of  a  patent.  So,  too,  there  cannot  be  a 
patent  for  an  effect,  but  it  must  be  for  the  mode  or  means  bv 
which  the  effect  is  produced  ;  ^  or  the  practical  mode  of  opera- 
ting, by  means  of  certain  agencies  or  properties  of  matter,  or 
laws  of  physics,  so  as  to  produce  a  given  effect. 

^  76.  The  consequences  of  allowing  a  patent  for  an  abstract 
art  or  a  principle,  instead  of  allowing  it  only  for  a  principle  as 
applied  to  the  production  of  a  particular  thing,  or  a  particular 
result  in  matter,  are  apparent,  when  it  is  considered  that  principles 
are  the  elements  of  science,  and  if  a  patent  could  be  taken 
for  a  newly-discovered  principle  in  science,  it  would  cover  every 


'  Forsyth  v.  Riviere,  Webs.  Pat.  Cas.  97,  note.  Per  Alderson ,  B. ,  in  Jupe 
y.  Pratt,  Ibid.  146,  and  in  Neilson  v.  Harford,  Ibid.  342. 

»  Earl  V.  Sawyer,  4  Mas.  1-6.  "  The  very  statement  of  what  a  princi- 
ple is  proves  it  not  to  be  a  ground  for  a  patent.  It  is  the  first  ground  and 
rule  for  arts  and  sciences,  or  in  other  words,  the  elements  and  rudiments  of 
them.  A  patent  must  be  for  some  new  production  from  those  elements  and 
not  for  the  elements  themselves."  Per  Buller,  J.,  in  Boulton  v.  Bull, 
2  H.  Bl.  485. 

'  Whittemore  v.  Cutter,  1  Gallis.  478,  480. 


INVENTION     OR    DISCOVERY.  63 

object  to  which  that  principle  could  be  applied,  and  the  whole 
field  of  the  arts  would  thus  at  once  be  occupied  by  a  few 
monopolists.^  If  a  patent  for  an  art  or  method  of  combining 
diflferent  elements  or  principles  in  science  were  possible,  without 
its  being  confined  to  a  particular  product  or  result  by  means  of 
such  an  art  or  method,  every  product,  substance,  or  manufac- 
ture, to  the  creation  of  which  that  art  or  method  could  be 
applied,  would  be  included  in  it.  Thus  it  has  been  happily 
pointed  out  by  an  eminent  English  judge  that  if  a  man  could 
have  a  patent  for  the  principle  or  abstract  art  of  intermixing 
water  with  oil  colors,  no  other  man  could  have  had  a  patent  for 
any  distinct  manufacture  produced  on  the  same  principle.^  The 
distinction  is  this  :  —  if  a  discovery  consists  merely  in  detecting 
some  new  property  of  matter,  or  of  the  elements  of  nature,  or 
the  laws  of  physics,  but  no  special  and  positive  application  is 
made  of  it  to  specific  fabrications,  it  is  a  discovery  in  science, 
or  abstract  mechanics,  and  not  patentable  ;  but  if  the  discoverer 
makes  use  of  such  a  new  property,  or  avails  himself  of  scientific 
or  mechanical  principles,  for  the  production  of  a  new  substance, 
instrument  or  machine,  obtaining  a  result  that  is  new,  and  of  a 
vendible  description,  the  particular  mode  of  producing  that  par- 
ticular thing  may  be  the  subject  of  a  patent.^     This  distinction 

'  "Indeed  it  seems  impossible  to  specify  a  principle,  and  its  application  to 
all  cases,  which  furnishes  an  argument  that  it  cannot  be  the  subject  of  a 
patent."     Per  Heath,  J.,  in  Boulton  v.  Bull,  2  H.  Bl.  483. 

^  The  case  of  water  tabbies,  which  has  often  been  mentioned  in  Weslmin- 
ster  Hall,  may  afford  some  illustration  of  this  subject.  That  invention  first 
owed  its  rise  to  the  accident  of  a  man's  spitting  on  a  floor  cloth,  which 
changed  its  color,  from  whence  he  reasoned  on  the  effect  of  intermixing 
water  with  oils  or  colors,  and  found  out  how  to  make  water  tabbies  and  had 
his  patent  for  water  tabbies  only.  But  if  he  could  have  had  a  patent  for  the 
principle  of  intermixing  water  with  oil  or  colors,  no  man  could  have  had  a 
patent  for  any  distinct  manufacture  produced  on  the  same  principle,  yet  as 
the  floor  cloth  and  the  tabby  are  distinct  substances,  calculated  for  distinct 
purposes  and  were  unknown  to  the  world  before,  a  patent  for  one  would  be 
no  objection  to  a  patent  for  another."  Per  Buller,  J.,  in  Boulton  u.  Bull, 
2  H.  Bl.  487. 

*  A  striking  illustration  of  this  distinction  occurred   before  Mr.  Justice 


64  LAW     OF     PATENTS. 

has  been  previously  noticed  ;  but  it  is  necessary  here  to  examine 
the  doctrine  and  to  asceitain  to  what  objects  the  distinction  has 
been  apphed  and  what  seem  to  be  its  necessary  limits. 

<§»  77.  We  have  already  seen  that  the  term  "manufacture" 
being  the  only  generic  term  used  in  the  Statute  of  Monopolies 
to  describe  the  subjects  of  lawful  patents,  it  became  necessary 
to  enlarge  it  by  construction  much  beyond  its  literal  import. 
As  soon  as  it  was  held  that  a  patent  could  be  taken  for  the 
mode  of  producing  an  effect,  as  in  Watt's  case,  for  the  mode  of 
lessening  the  consumption  of  steam  in  a  steam  engine,  the  lite- 
ral meaning  of  this  term  was  widely  departed  from,  and  that 
was  held  to  be  a  "  manufacture "  within  the  meaning  of  the 
statute,  which  in  reality  consisted  in  the  new  application  of  cer- 
tain principles  of  physics,  to  effect  the  more  economical  use  of 
a  well  known  machine.  This,  of  necessity,  opened  the  whole 
subject  of  principle  and  method,  and  led  to  the  doctrine  which 
we  are  now  to  state. 

Story.  The  plaintifTs  specification  claimed  "as  new,  to  cut  ice,  of  a  uni- 
form size,  by  means  of  an  apparatus  worked  by  any  other  power  than  human. 
The  invention  of  this  art,  as  well  as  the  particular  method  of  the  application 
of  the  principle,  are  claimed  by  the  subscriber."  The  learned  judge  said  "  it  is 
plain,  then,  that  here  the  patentee  claims  a  title  to  the  art  of  cutting  ice  by 
means  of  any  power,  other  than  human  power.  Such  a  claim  is  surely  un- 
maintainable in  point  of  law.  It  is  a  claim  for  an  art  or  principle  in  the  ab- 
stract, and  not  for  any  particular  method  or  machinery  by  which  ice  is  to  be 
cut.  No  man  can  have  a  right  to  cut  ice  by  all  means  or  methods,  or  by  all 
or  any  sort  of  apparatus,  although  he  is  not  the  inventor  of  any  or  all  of  such 
means,  methods,  or  apparatus."  Wyeth  v.  Stone,  1  Story's  R.  273,  285. 
But  the  court  intimated  that  the  claim  for  the  particular  method  of  the  appli- 
cation of  the  principle  would  have  been  good,  if  a  disclaimer  had  been  filed  in 
season  as  to  that  part  of  the  claim  which  was  clearly  bad.     Ibid. 

See  also  Stone  v.  Sprague,  1  Story's  R.  270,  where  in  a  patent  for  an 
improvement  on  looms,  the  invention  claimed  was  the  communication  of 
motion  from  the  reed  to  the  yarn  beam,  in  the  connection  of  the  one  with  the 
other,  which  is  produced  as  follows,  describing  the  mode,  it  was  held,  that 
the  invention  was  limited  to  the  specific  machinery  and  mode  of  communica- 
ting the  motion,  &c.  specifically  described  in  the  specification ;  otherwise  it 
would  be  a  claim  for  the  abstract  principle  of  communicating  motion  in  all 
possible  modes. 


INVENTION     OR     DISCOVERY.  65 

<§>  78.  Although  a  patent  cannot  be  taken  out  for  a  new  prin- 
ciple, yet,  where  it  has  been  embodied,  so  as  to  be  capable  of 
being  made  active,  it  is,  as  we  have  seen,  a  proper  subject  of  a 
patent ;  and  if  any  other  person  puts  that  principle  into  use,  in 
any  other  form,  it  is  a  question  for  a  jury,  whether  that  form  be 
not  substantially  an  adaptation  of  the  principle,  applied  with  the 
same  view  to  answer  the  same  end,  and  merely  imitated  in  sub- 
stance, whatever  difference  there  may  be  in  point  of  form.  If 
the  patentee  has  invented  some  mode  of  carrying  the  principle 
into  effect,  he  is  entitled,  it  is  said,  to  protect  himself  from  all 
other  modes  of  carrying  the  same  principle  into  effect.^  In 
point  of  fact,  the  patent  in  such  cases  is  taken,  not  for  the  prin- 
ciple itself  but  for  the  mode  of  carrying  into  effect ;  ^  so  that 
when  it  is  alleged  that  an  infringement  has  taken  place  the 
question  is  whether  the  defendant  has  undertaken  to  carry  the 
same  principles  into  effect  in  the  same  mode,  so  that  in  sub- 
stance, all  the  variations  of  means  and  appliances  which  he  has 
made  use  of  are  merely  colorable  variations  of  the  mode  of  car- 
rying it  into  effect  invented  by  the  patentee.  This  seems  to  be 
what  is  intended  by  the  learned  judge  whose  observations  are 
cited  in  the  foregoing  note,  when  he  says  that  the  patentee  is 
entitled  to  protection  against  all  other  means  of  carrying  the 
principle  into  effect.^     He  is  entitled  to  protection  against  all 


'  In  Jupe  V.  Pratt,  "Webs.  Pat.  Cas.  144,  146,  Alderson,  B.,  said,  "  Thediffi- 
culty  which  will  press  on  you,  and  to  which  your  attention  will  be  called,  in 
the  present  case,  is  this  ;  you  can  take  out  a  patent  for  a  principle  coupled 
with  the  mode  of  carrying  the  principle  into  effect,  provided  you  have  not 
only  discovered  the  principle,  but  invented  some  mode  of  carrying  it  into 
effect.  But  then  you  must  start  with  having  invented  some  mode  of  carry- 
ing the  principle  into  effect ;  if  you  have  done  that,  then  you  are  entitled  to 
protect  yourself  from  all  other  modes  of  carrying  the  same  principle  into 
effect,  that  being  treated  by  the  jury  as  a  piracy  of  your  original  invention. 
But  then  the  difficulty  that  will  press  on  you  here  is,  that  on  the  evidence, 
there  does  not  appear  to  have  been  any  mode  of  carrying  the  principle  into 
effect  at  all  invented  by  you." 

*  See  Hill  v.  Thompson,  Webs.  Pat.  Cas.  227  ;    3  Meriv.  626. 

'  See  the  observations  of  the  same  learned  judge,  in  Neilson  v.  Harford, 
Webs.  Pat.  Cas.  342. 
6* 


66  LAW    OF     PATENTS. 

colorable  variations  for  carrying  the  same  principle  into  practice 
for  obtaining  the  same  effect  or  result.^ 

<§.  79.  Thus,  there  may  be  a  patent  for  the  practical  application 
of  a  known  thing  to  produce  a  particular  effect.  As  in  the  case 
of  Hartley's  invention  to  protect  buildings  from  fire,  by  the  ap- 
plication of  plates  of  metal.^  So  too,  in  the  case  of  Forsyth's 
patent,  for  the  application  of  detonating  powder,  which  he  did 
not  invent,  to  the  discharge  of  artillery,  mines,  &,c.  the  patentee 
succeeded  in  an  action  against  a  party  using  a  lock  of  different 
construction  to  any  shown  in  the  drawing  annexed  to  his  speci- 
fication, and  thus  established  his  right  to  the  exclusive  use  and 
application  of  detonating  powder  as  priming,  whatever  the  con- 
struction of  the  lock  by  which  it  was  discharged.^  In  the  same 
way,  where  the  plaintiff  had  obtained  a  patent  for  the  applica- 
tion of  the  flame  of  gas,  to  singe  off  the  superfluous  fibres  of 
lace  and  other  goods,  but  did  not  claim  the  exclusive  use  of  any 
apparatus  or  combination  of  machinery,  except  in  connection 

'  In  Gray  v.  James,  Peters's  Cir.  C.  R.  394,  400,  where  the  patent  was 
"  for  an  improvement  in  the  art  of  making  nails  by  means  of  a  machine 
which  cuts  and  heads  the  nail  at  one  operation,"  Washington,  J.,  applied 
the  same  doctrine,  holding  that  where  two  machines  are  substantially  the 
same,  and  operate  in  the  same  manner,  to  produce  the  same  result,  they 
roust  be  in  principle  the  same ;  and  that  when  the  same  result  is  referred  to 
as  the  test,  it  must  mean  the  same  kind  of  result  though  it  may  differ  in 
extent.  He  further  instructed  the  jury  as  follows:  "The  patent  is  sup- 
posed to  be  for  the  machine  itself,  which  is  composed  of  parts  which  have 
long  become  public  property.  This  is  not  the  fact.  The  patent  is  for  an 
improvement  in  the  art  of  making  nails  by  means  of  a  machine  which  cuts 
and  heads  the  nails  at  one  operation.  It  is  therefore  not  the  grant  of  an 
abstract  principle,  nor  is  it  the  grant  of  the  different  parts  of  any  machine  ; 
but  of  an  improvement  applied  to  a  practical  use,  effected  by  a  combination 
<?f  various  mechanical  powers  to  produce  a  new  result.  The  lever,  the  vice, 
the  cutters,  the  dies,  &c.  may  be  used  by  any  person  without  a  violation  of 
the  plaintiff's  patent.  But  they  cannot  be  used  in  their  combined  state  to 
produce  by  the  same  operation,  the  same  result,  which  is  the  distinguishing 
characteristic  of  the  plaintiff's  machine,  without  a  license  from  the  owners." 

*  See  Boulton  v.  Bull,  2  H.  Bl.  495.     Webs.  Pat.  Cas.  54,  56,  note. 

»  Forsyth  v.  Riviere,  Webs.  Pat.  Cas.  95,  97,  note. 


INVENTION    OR    DISCOVERY.  67 

with,  and  in  aid  of  tiie  application  of  the  flame  of  gas  to  the 
purposes  described  in  his  specification,  he  had  a  verdict  founded 
on  his  sole  right  to  use  gas  flame  for  the  clearing  of  fibres  from 
lace.^  So  also,  where  the  invention  consisted  in  the  use  of  an- 
thracite or  stone  coal,  combined  with  the  hot  air-blast,  in  the 
smelting  or  manufacture  of  iron  from  iron  stone,  mine  or  ore ; 
and  the  using  of  the  hot  blast  was  known  before  in  the  manu- 
facture of  iron  with  bituminous  coal,  and  the  use  of  anthracite 
or  stone  coal  was  known  before  in  the  manufacture  of  iron  with 
cold  blast,  but  the  combination  of  the  hot  blast  and  the  an- 
thracite was  not  known  before  in  the  manufacture  of  iron,  the 
Court  of  Common  Pleas  declared,  that  if  the  result  produced  by 
such  a  combination  is  either  a  new  article  or  a  better  article,  or 
a  cheaper  article  to  the  public  than  that  produced  before  by  the 
old  method,  such  combination  is  an  invention  or  manufacture 
intended  by  the  statute,  and  may  well  become  the  subject  of  a 
patent.^     Again,  where  the  invention  was  to  manufacture  iron 


•  Hall  V.  Jervis,  Webs.  Pat.  Cas.  100,  103. 

«  Crane  v.  Price,  Webs.  Pat.  Cas.  393,  408.  In  this  case  Sir  N.  C.  Tindall, 
C.  J.,  said  ;  *'  Now  in  order  to  determine  whether  the  improvement  described 
in  the  patent,  is  or  is  not  a  manufacture  within  the  statute,  we  must,  in  the 
first  place,  ascertain  precisely  what  is  the  invention  claimed  by  the  plaintiff; 
and  then,  by  the  application  of  some  principles,  admitted  and  acknowledged 
in  the  application  of  the  law  relating  to  patents,  and  by  the  authority  of  de- 
cided cases,  determine  the  question  in  dispute  between  the  parties.  The 
plaintiff  describes  the  object  of  his  invention  to  be  the  application  of  anthra- 
cite or  stone  coal,  combined  with  hot  air-blast  in  the  smelting  or  manufacture 
of  iron  from  iron  stone,  mine,  or  ore,  and  states  distinctly  and  unequivocally 
at  the  end  of  his  specification,  that  he  does  not  claim  the  use  of  a  hot  air- 
blast,  separately,  as  of  his  invention,  when  uncombined  with  the  application 
of  anthracite  or  stone  coal.  Nor  does  he  claim  the  application  of  anthra- 
cite or  stone  coal,  when  uncombined  with  the  using  of  hot  air-blast,  in  the 
smelting  and  manufacture  of  iron  from  iron  stone,  mine  or  ore.  And  the 
question,  therefore,  becomes  this  —  whether,  admitting  the  using  of  the  hot 
air-blast  to  have  been  known  before  in  the  manufacture  of  iron  with  bitu- 
minous coal,  and  the  use  of  anthracite  or  stone  coal,  to  have  been  known 
before  in  the  manufacture  of  iron  with  coal  blast,  but  that  the  combination 
of  the  two  together  (the  hot  blast  and  the  anthracite)  were  not  known  to  be 


68  LAW    OF    PATENTS. 

tubes  by  welding  them,  without  the  use  of  any  maundril,  or 


combined  before  in  the  manufacture  of  iron,  whether  such  combination  can 
be  the  subject  of  a  patent. 

We  are  of  opinion,  that  if  the  result  produced  by  such  a  combination  is 
either  a  new  article,  or  a  better  article,  or  a  cheaper  article  to  the  public, 
than  that  produced  before  by  the  old  method,  that  such  combination  is  an  in- 
vention or  manufacture  intended  by  the  statute,  and  may  well  become  the 
subject  of  a  patent.  Such  an  assumed  state  of  facts  falls  clearly  within  the 
principle  exemplified  by  Abbott,  C.  J.,  (The  King  v.  Wheeler,  2  B.  &  Aid. 
349,)  where  he  is  determining  what  is  or  what  is  not  the  subject  of  a  patent ; 
namely,  it  may,  perhaps,  extend  to  a  new  process,  to  be  carried  on  by  known 
implements  or  elements  acting  upon  known  substances,  and  ultimately  produ- 
cing some  other  known  substance,  but  producing  it  in  a  cheaper  or  more  expe- 
ditious manner,  or  a  better  or  more  useful  kind.  And  it  falls  also  within  the 
doctrine  laid  down  by  Lord  Eidon,  (Hill  v.  Thompson,  Webs.  Pat.  Cas.  p. 
237,)  that  there  may  be  a  valid  patent  for  a  new  combination  of  materials  pre- 
viously in  use  for  the  same  purpose,  or  even  for  a  new  method  of  applying 
such  materials.  But  the  specification  must  clearly  express,  that  it  is  in  re- 
spect of  such  new  combination  or  application. 

There  are  numerous  instances  of  patents,  where  the  invention  consisted 
in  no  more  than  in  the  use  of  things  already  known,  and  acting  with  them 
in  a  manner  already  known,  and  producing  effects  already  known,  but  pro- 
ducing those  effects  so  as  to  be  more  economically  or  beneficially  enjoyed  by 
the  public.  It  will  be  sufficient  to  refer  to  a  few  instances,  some  of  which 
patents  have  failed  on  other  grounds,  but  none  on  the  ground  that  the  inven- 
tion itself  was  not  the  subject  of  a  patent. 

We  may  first  instance  Hall's  patent  for  applying  the  flame  of  gas  to  singe 
off  the  superfluous  fibres  of  lace,  where  a  flame  of  oil  had  been  used  before 
for  the  same  purpose.  (Webs.  Pat.  Cas.  p.  97.)  Derosne's  patent,  in  which 
the  invention  consisted  in  filtering  the  syrup  of  sugar  through  a  filter,  to  act 
with  animal  charcoal,  and  charcoal  from  bituminous  schistus,  where  charcoal 
had  been  used  before  in  the  filtering  of  almost  every  other  liquor,  except  the 
syrup  of  sugar.  (Webs.  Pat.  Cas.  p.  152.)  Hill's  patent,  above  referred  to, 
for  improvements  in  the  smelting  and  working  of  iron  ;  there  the  invention 
consisted  only  in  the  use  and  application  of  the  slags  or  cinders  thrown  off 
by  the  operation  of  smelting,  which  had  been  previously  considered  useless 
for  the  production  of  good  and  serviceable  metal,  by  the  admixture  of  mine 
rubbish.  Again,  DanielPs  patent  was  taken  out  for  improvements  in  dress- 
ing woollen  cloth,  where  the  invention  consisted  in  immersing  a  roll  of  cloth, 
manufactured  in  the  usual  manner,  into  hot  water.  (Webs.  Pat.  Cas.  71, 
note  £.,  and  the  King  v.  Daniell,  Godson  on  Pat.  274.) 

The  only  question,  therefore,  that  ought  to  be  considered  on  the  evidence 


INVENTION    OR    DISCOVERY.  69 

internal  support,  but  the  patentee  did  not  claim  any  precise 
construction  of  apparatus  for  this  purpose,  but  his  claim  con- 
sisted in  heating  the  previously  prepared  tubes  of  iron  to  a 
welding  heat,  and  then  without  any  internal  support,  drawing 
them  between  dies  or  holes,  by  which  the  edges  of  the  heated 
iron  became  pressed  and  welded  together ;  and  the  defendant 
had  made  tubes  upon  the  same  principle  of  manufacture,  but 
with  a  somewhat  varied  apparatus  ;  the  patentee  had  a  verdict 
for  the  infringement,  and  his  patent  was  afterwards  sustained 
before  the  Court  of  Exchequer  in  banc} 

is,  was  the  iron  produced  by  the  combination  of  the  hot  blast  and  the  an- 
thracite, a  better  or  a  cheaper  article  than  was  before  produced  from  the  com- 
bination of  the  hot  blast  and  the  bituminous  coal ;  and  was  the  combination, 
described  in  the  specification,  new,  as  to  the  public  use  thereof  in  England. 
And,  upon  the  first  point,  upon  looking  at  the  evidence  in  the  cause,  we 
think  there  is  no  doubt,  that  the  result  of  the  combination  of  the  hot  blast 
with  the  anthracite  on  the  yield  of  the  furnace  was  more,  the  nature,  pro- 
perties and  quality  of  the  iron  better,  and  the  expense  of  making  the  iron 
less  than  it  was  under  the  former  process,  by  means  of  the  combination 
of  the  hot  blast  with  the  bituminous  coal." 

'  Russell  V.  Cowley,  Webs.  Pat.  Cas.  459,  465.  At  the  trial,  at  the  close 
of  the  plaintiff 's  case,  Lord  Lyndhurst,  C.  B.,  who  presided,  recalled  Mr. 
Brunei  and  Mr.  Donkin,  when  the  following  questions  were  put,  and  an- 
swers given  :  Lord  Lyndhurst,  C.  B.  :  "  When  the  upper  roller  is  down,  its 
lower  edge  lies  upon  the  upper  ledge  of  the  under  roller  ;  and  there  is  a 
hole  between  the  rollers,  and  through  that  hole,  by  means  of  the  revolution 
of  the  rollers,  the  heated  tube  is  drawn.  Now,  I  wish  to  ask  you,  whether 
that  (without  the  scorpion)  which  they  say,  by  pressure,  welds  the  heated 
tube — the  sides  of  the  hole,  they  say,  weld  the  tube  —  is  in  your  judgment 
similar,  though  not  exactly  the  same,  similar  to  the  invention  of  the  plaintiflf; 
the  plaintiff  stating  that  his  invention  is  of  this  description  — "  The  principle 
of  my  invention  is  the  healing  the  previously  prepared  tubes  of  iron  to  a  welding 
heat,  that  is,  nearly  to  the  point  of  fusion,  and  then,  after  withdrawing  them 
from  the  fire,  to  pass  them  between  dies,  or  through  holes,  by  which  the  edges 
of  the  heated  iron  may  be  pressed  together,  and  the  joint  firmly  welded  ;  "  "  I 
want  to  know  whether  that  effect  is  produced  by  the  rollers,  although  not  so 
perfectly  as  by  the  dies?  "     Mr.  Brunei  —  "  It  is  produced  by  the  rollers." 

"Then  I  want  to  know  whether  the  passing  them  through  the  rollers  in 
that  way  alone  is  not  similar,  although  not  so  perfect,  as  passing  them 
through  the  dies  or  through  the  tongs?  "  Mr.  Brunei  —  "  It  is  my  opinion 
that  it  is  the  same." 


70  LAW     OF     PATENTS. 

<^  80.  And  where  the  invention  consisted  in  the  apphcalion 
of  heated  air  as  a  blast  for  fires,  forges,  and  furnaces,  but  the 
patentee  claimed  no  particular  form  of  apparatus  for  heating  the 
air,  but  described  an  apparatus  by  which  it  might  be  heated ; 
and  the  defendant  had  employed  an  apparatus  confessedly 
superior  in  its  eflects  to  that  described  in  the  plaintiffs  specifi- 
cation, and  such  an  improvement  as  would  have  supported  a 
patent;  but  as  it  involved  the  principle  of  the  plaintiffs  invention, 
it  was  held  an  infringement.^ 

"It  is  by  the  pressure  of  the  sides  of  that  hole,  that  the  edges  of  the 
heated  iron  are  welded  together^  "     Mr.  Brunei  —  "  It  is." 

"  By  passing  through  the  holes  of  the  dies,  it  is  by  the  pressure  of  the 
sides  of  the  hole  that  the  edges  of  the  heated  iron  are  welded  together? '" 
Mr.  Brunei  — "Quite  so." 

"Then  I  ask,  whether,  if  it  is  a  question  of  welding,  the  one  is  in  your 
judgment  similar  to  the  other?  "     Mr.  Brunei  —  "  It  is." 

"Mr.  Donkin,  you  have  heard  the  questions  I  have  put  to  Mr.  Brunei  — 
I  wish  to  have  your  opinion  upon  the  same  point?  "  Mr.  Donkin  —  "I  think 
the  holes,  when  closed,  one  upon  the  other,  produce  a  similar  effect,  and  the 
method  of  welding  is  therefore  the  same." 

"Then  you  think  one  invention,  in  principle,  is  similar  to  the  other?" 
Mr.  Donkin  — "I  do." 

Lord  Lyndhurst,  C.  B.  :  I  confess  it  appeared  to  me  from  reading  the  spe- 
cification, that  without  the  scorpion,  the  one  is  an  imitation  of  the  other; 
because  this  party  says,  "  1  do  not  claim  this  particular  apparatus  only.  I  do 
it  by  the  die,  or  I  do  it  by  the  tongs ;  the  principle  of  my  invention  is,  to 
pass  the  heated  tubes  through  the  hole  at  a  welding  heat,  and  by  pressure 
occasioned  by  that  hole,  to  unite  together  the  heated  edges  by  welding." 
That  may  be  done  m.ore  or  less  perfectly  —  whether  it  is  by  the  rollers  or  by 
the  tongs,  it  is  not  very  material ;  the  one  is  similar  in  principle  to  the  othei, 
»  Neilson  v.  Harford,  Webs.  Pat.  Cas.  295,  310,  328.  Mr.  Baron  Parke 
in  this  case  said  to  the  Jury  :  "  Now  the  best  way  of  disposing  of  this  case,  I 
think  will  be  to  take  those  questions  in  order  upon  which  you  are  to  pronounce 
your  opinion  ;  and  the  first  is,  whether  the  defendants  have  been  guilty  of 
infringing  the  patent?  and  I  apprehend  that  there  is  no  doubt  they  have,  it 
the  patent  be  a  good  patent,  and  if  the  specification  be  free  from  the  objections 
that  are  raised  to  it ;  and  if  the  specification  is  to  be  understood  in  the  sense 
claimed  by  the  plaintiffs,  the  invention  of  heating  the  air  between  its  leaving 
the  blowing  apparatus  and  its  introduction  into  the  furnace,  in  any  way,  in 
any  close  vessel,  which  is  exposed  to  the  action  of  heat,  there  is  no  doubt 
that  the  defendants'  machinery  is  an  infringement  of  that  patent,  because  it  \> 


INVENTION    OR    DISCOVERT.  71 

^81.  In  cases  of  this  class,  where  the  most  important  part 
and  merit  of  the  invention  consists  in  the  conception  of  the  origi- 
nal idea,  rather  than  in  the  manner  in  which  it  is  to  be  carried 
out,  or  applied  in  practice,  it  is  clear  that  a  principle  carried  into 
practice  by  some  means,  constitutes  the  subject-matter  of  the 
patent.  Inventions  of  this  class  may  have  a  character  totally  inde- 
pendent of  the  particular  means  by  which  they  are  applied, 
although  the  patentee  must  have  applied  the  invention  by  some 
means  ;  and  when  he  has  done  so,  the  imitating  that  character 
may  be  a  piracy  of  that  invention,  although  the  means  may  be 
very  different,  and  such  as  in  themselves  might  constitute  a  dis- 
tinct or  substantial  invention.^  The  machinery  employed  is  not  of 
the  essence  of  the  invention,  but  incidental  to  it.^  In  cases  like  the 
foregoing,  however,  although  machinery,  apparatus,  or  other 
arrangement  of  matter  is  not  of  the  essence  of  the  invention, 
still  it  is  of  some  importance.  But  there  is  another  class  of 
cases,  where  the  application  of  a  principle  is  still  more  distinctly 
seen  to  constitute  the  subject-matter  of  the  invention,  because 
it  requires  no  peculiar  and  substantive  machinery  or  apparatus, 
or  composition  of  matter,  to  give  it  application, 

<§>  81.  a.  In  these  cases,  the  subject-matter  of  the  invention  is 
an  application  and  adaptation  of  a  natural  or  known  agent,  or  a 
known  substance  or  thing,  to  produce  a  given  effect.^ 

the  use  of  air  which  is  heated  much  more  beneficially,  and  a  great  improve- 
ment upon  what  would  probably  be  the  machine  constructed  by  looking  at 
the  specification  alone  ;  but  still  it  is  the  application  of  heated  air,  heated  in 
one  or  more  vessels  between  the  blowing  apparatus  and  the  furnace,  and 
therefore  if  it  should  turn  out  that  the  patent  is  good,  and  the  specification  is 
good,  though  unquestionably  what  the  defendants  have  done  is  a  great  im- 
provement upon  what  would  be  the  species  of  machinery  or  apparatus  con- 
structed under  this  patent,  it  appears  to  me  that  it  would  be  an  infringement 
of  it ;  therefore  your  verdict  upon  that  issue  would  be  for  the  plaintiff,  pro- 
vided it  is  for  the  plaintiff  on  the  other  issues." 

■  Webster  on  the  Subject-Matter,  &c.  p.  18. 

*  Per  Eyre  C.  J.,  in  Boulton  v.  Bull,  2  H.  Bl.  496. 

^  The  adaptation  of  the  properties  and  qualities  of  a  known  substance  to  a 


72  LAW    OF    PATENTS. 

As  in  Daniell's  patent  for  improvcmenls  in  dressing  woollen 
cloth,  the  invention  consisted  in  immersing  cloth,  manufactured 
in  the  usual  manner,  in  hot  water  ;  and  in  Fusell's  patent  the 
cloth  was  subjected  to  a  steam  bath  with  the  same  object.^  In 
Christ's  patent  for  "  improvements  in  copper  and  other  plate 
printing,"  the  substance  of  the  invention  was  in  the  preparation 
of  the  paper,  and  the  particular  means  by  which  this  was  effected 
was  by  "  putting  a  glazed  enamelled  surface  on  the  paper  by 
means  of  white  lead  and  size,  whereby  the  finer  lines  of  the 
engraving  are  better  exhibited  than  heretofore."  ^  So  too,  the 
omission  of  any  ingredient  previously  used  in' and  considered 
essential  to  a  particular  process  or  manufacture,  constitutes  such 
a  change  in  the  series  of  processes  pursued,  as  to  be  a  new  man- 
ufacture. As  where  a  patent  was  taken  for  "anew  and  im- 
proved method  of  making  and  manufacturing  double  canvass 
and  sail  cloth  with  hemp  and  flax,  or  either  of  them,  without 


particular  purpose,  for  which  they  had  never  been  known  or  used  before,  may 
be  the  subject  of  a  patent.  As  the  use  of  india  rubber  as  a  fillet,  in  cards 
for  carding  wool,  &c.,  to  receive  the  teeth,  and  thereby  to  give  them  greater 
firmness  and  elasticity,  than  when  they  are  set  in  leather.  See  Walton  v. 
Potter,  Webs.  Pat.  Cas.  585,  604. 

'  Webster  on  the  Subject-Matter,  &c.  p.  22.  The  latter  patent  was  held 
an  infringement  on  the  former  ;  but  both  were  repealed  for  want  of  novelty. 
Ibid. 

*  Sturz  V.  De  La  Rue,  5  Russ.  Ch.  R.  322,  324.  In  this  case  Lord  Lynd- 
hurst,  C.  B.  said,  "  Copperplate  printing  consists  of  processes  involving  a 
great  variety  of  circumstances  ;  the  paper  must  be  of  a  particular  description  ; 
before  it  is  used,  it  must  be  damped ;  it  must  remain  damp  a  certain  time, 
and  must  be  placed  in  a  certain  temperature  ;  the  plate  must  be  duly  prepared, 
and  duly  applied,  and  various  processes  must  be  gone  through  before  the 
impression  is  drawn  off  and  brought  to  a  finished  state.  An  improvement 
in  any  one  of  these  circumstances,  in  the  preparation  of  the  paper,  for 
instance,  in  the  damping  of  it,  &c.,  may  truly  be  called  an  im-provement  in 
copperplate  printing.  In  this  case,  the  principal  part  of  the  improvement 
relates  to  the  preparation  of  the  paper.  It  is  material  to  the  perfection  of 
the  copperplate  printing  that  the  lines  should  be  as  distinct  as  possible  ;  and 
if,  by  adding  anything  to  the  surface  of  the  paper,  more  clearness  is  given  to 
the  lines,  that  is  an  improvement  in  copperplate  printing." 


SUBJECT    OF    INVENTION    OR    DISCOVERY.  73 

any  starch  whatever;"^  and  where  another  invention,  for 
rendering  cloth  fabrics  water  proof,  consisted  in  immersing  them 
in  various  solutions  in  a  different  order  from  that  which  had 
been  previously  followed,  although  the  same  solutions  had  been 
previously  used.^ 

*§)  82.  It  appears,  then,  that  there  is  a  large  class  of  cases, 
where  improvements  or  inventions  in  the  mode  of  producing  a 
particular  known  effect  will  be  the  subject-matter  of  letters- 
patent  ;  and  another  large  class  of  cases,  in  which  the  discovery 
and  application  of  new  means  of  producing  an  effect  before 
unknown,  will  also  be  the  subject-matter  of  a  patent.  One  of 
these  classes  embraces  all  cases  of  the  new  application  of  known 
agents  and  things,  so  as  to  lead  to  a  change  in  the  series  of 
processes  by  which  the  particular  effect,  result,  or  manufacture 
is  produced,  or  by  which  an  entirely  new  effect,  result,  or  manu- 
facture is  produced.  The  other  embraces  all  cases  of  the  dis- 
covery and  application  of  new  agents  or  things,  by  which  a  new 
effect  or  result  is  to  be  produced.^ 


'  Campion  t).  Benyon,  4  B.  Moore,  71,  cited  Webster  on  theSubject-Matter, 
&c.,  p.  23,  note. 

*  Halliwell  v.  Dearman,  Webs.  Pat.  Cas.  401,  note  {t.)  "  The  object  of  the 
plaintiflPs  invention  was  the  rendering  fabrics  water  proof,  but  at  the  same 
time  leaving  such  fabrics  pervious  to  air.  It  appeared  that  before  the  plain- 
tiffs patent  a  solution  of  alum  and  soap  was  made,  and  the  fabric  to  be 
rendered  water  proof  was  immersed  therein.  By  this  means  a  water  proof 
surface  was  produced  on  the  fabric,  but  it  was  not  of  a  lasting  nature,  it  wore 
off.  According  to  the  plaintiff's  invention,  the  fabric  is  immersed  first  in  a 
mixture  of  a  solution  of  alum  with  some  carbonate  of  lime,  and  then  in  a 
solution  of  soap.  The  effect  is,  that  by  the  first  immersion  every  fibre 
becomes  impregnated  with  the  alum,  the  sulphuric  acid  of  the  alum  being 
neutralized  by  the  carbonate  of  lime,  and  by  the  second  immersion  the  oily 
quality,  rendering  it  repellant  of  water,  is  given  to  every  fibre,  so  that  each 
fibre  is  rendered  water  proof,  instead  of  the  surface  only ;  but  the  whole 
fabric  continued  pervious  to  air." 

'  The  application  of  electricity  for  the  transmission  of  signals  or  messages, 
copying  impressions  and  gilding,  and  the  application  of  light  for  the  purposes 
of  photography,  belong  to  one  or  the  other  of  these  classes,  according  to  the 
7 


74  LAW    OF     PATENTS. 

^  S3.  In  determining  whether  an  alleged  invention  or  dis- 
covery is  such  as  will  support  a  patent,  the  question  must  often 
arise,  what  is  meant  by  the  application  of  a  principle  ?  And 
this  question  involves  two  inquiries  ;  first,  how  must  the  principle 
be  made  use  of,  and  secondly,  what  must  be  the  result  pro- 
duced ? 

<§.  84.  It  has  already  been  stated,  that  the  embodiment  of  a 
principle,  so  that  it  may  be  in  a  condition  to  act  and  to  produce 
;in  effect,  may  be  the  subject  of  a  patent.  There  is,  in  other 
words,  a  distinction  between  the  principle  that  is  so  embodied, 
and  the  principle  of  such  embodiment ;  the  former  is  a  truth  of 
exact  science,  or  a  law  of  matter,  or  a  rule  of  practice  ;  while 
the  latter  is  the  practice  founded  on  such  truth,  law,  or  rule.'^ 


view  taken  of  the  agents  made  use  of,  and  the  result  produced.  In  the  case 
of  the  electric  telegraph,  electricity  was  an  agent  known  before  this  appli- 
cation ;  the  effect,  as  produced  by  electricity,  was  wholly  new.  The  same 
may  be  said  of  the  use  of  light  in  photography,  for  although  pictures  existed 
before,  such  pictures  as  are  produced  by  that  process  were  wholly  new.  It 
is  not  always  necessary,  perhaps  not  expedient,  to  attempt  a  rigid  classifica- 
tion of  such  inventions.  Each  is  to  be  tested  by  the  application  of  general 
principles  to  the  particular  facts  of  the  case.  In  analyzing  the  subject-matter 
of  the  invention,  when  it  is  of  this  character,  we  must  first  determine  whether 
the  agents  employed  are  themselves  newly-discovered,  or  well  known; 
secondly  whether  they  are  applied  in  a  new  method;  thirdly,  whether  they 
produce,  as  applied,  a  new  or  an  old  result.  According  to  the  results  of  this 
analysis,  we  may  determine  the  patentable  character  of  the  invention  or  dis- 
covery. 

'  Webster  on  the  Subject-Matter,  p.  44.  A  clear  illustration  of  this  dis- 
tinction is  to  be  found  in  the  case  of  Blanchard  v.  Sprague,  3  Sumner's  R. 
535.  The  plaintiff's  patent  was  for  "  An  invention  of  a  machine  for  turning 
or  cutting  irregular  forms."  The  plaintiff"  in  his  specification  declared  that 
"  as  to  the  mechanical  powers  by  which  the  movements  are  obtained,  he 
claims  none  of  them  as  his  invention.  These  movements  may  be  effected 
by  application  of  various  process  indifferently.  Neither  does  he  claim  as  his 
invention  the  cutter  wheel,  or  cutters,  or  friction  wheel  as  such,  nor  the  use 
of  a  model  to  guide  the  cutting  instrument,  as  his  invention.  All  these  are 
common  property,  and  have  been  so  for  years,  but  he  claims  as  his  invention 
the  method  or  mode  of  operation  in  the  abstract,  explained  in  the  second  artick, 


SUBJECT    OF    INVENTION    OR    DISCOVERY.  75 

<§>  85.  This  practice  consists  in  the  application  of  the  princi- 
ple. But  it  is  not  every  application  of  the  principle,  or  every 
occasion  on  which  the  principle  can  be  applied,  that  can  be  the 
subject  of  a  patent.  The  principle  may  have  been  discovered 
and  applied  before,  and  when  this  is  the  case,  the  new  appli- 
cation may  be  only  what  is  described  in  patent  law  as  a  "double 
use,"  which  cannot  be  the  subject  of  a  patent.  In  such  cases, 
there  may  be  in  the  new  application  some  degree  of  novelty  ; 
something  may  have  been  discovered,  or  found  out,  that  was 


lohereby  the  infinite  variety  of  forms,  described  in  general  terms  in  this  article 
may  be  tor  ought.'''  In  another  part  of  his  specification  he  said —  "  In  ex- 
plaining and  describing  the  different  modes  in  which  he  contemplates  the 
application  of  the  principle  or  character  of  his  said  machine  or  invention,  he 
does  this  in  compliance  VA'ith  the  requirements  of  the  law,  and  not  by  way  of 
extending  his  claim  for  discovery  or  invention.  His  invention  is  described 
and  explained  in  the  second  article  of  this  specification,  to  which  reference  is 
hereby  made  for  information  of  that,  which  constitutes  the  principle  or  char- 
acter of  his  machine  or  invention,  and  distinguishes  it,  as  he  verily  believes, 
from  all  other  machines,  discoveries  or  inventions,  known  or  used  before.  In 
the  second  article,  to  which  he  refers,  the  plaintiff  explained  the  principle 
and  character  of  his  machine,  and  the  mode  of  constructing  it  to  effect  the 
different  objects  to  be  accomplished,  and  the  mode  of  operation." 

Mr.  Justice  Story  said,  "  Looking  at  the  present  specification,  and  con- 
struing all  its  terms  together,  I  am  clearly  of  opinion,  that  it  is  not  a  patent 
claimed  for  a  function,  but  it  is  claimed  for  the  machine  specially  described 
in  the  specification  ;  that  it  is  not  for  a  mere  function  but  for  a  function  as 
embodied  in  a  particular  machine,  whose  mode  of  operation  and  general 
structure  are  pointed  out.  In  the  close  of  his  specification,  the  patentee 
explicitly  states  that  his  "  invention  is  described  and  explained  in  the  second 
article  of  his  specification,  to  which  reference  is  made  for  information  of  that, 
which  constitutes  the  principle  or  character  of  his  machine  or  invention,  and 
distinguishes  it,  as  he  verily  believes,  from  all  other  machines,  discoveries,  or 
inventions  known  or  used  before."  Now,  when  we  turn  to  the  second  arti- 
cle, we  find  there  described,  not  amere  function,  but  a  machine  of  a  particu- 
lar structure  whose  modes  of  operation  are  pointed  out,  to  accomplish  a  par- 
ticular purpose,  function,  or  end.  This  seems  to  me  sufficiently  expressive 
to  define  or  ascertain,  what  his  invention  is.  It  is  a  particular  machine, 
constituted  in  the  way  pointed  out,  for  the  accomplishment  of  a  particular  end 
or  object.  The  patent  is  for  a  machine,  and  not  for  a  principle  or  function 
detached  from  machinery."' 


76  LAW    OF      PATENTS. 

not  known  before,  but  unless  the  new  occasion  on  which  the 
principle  is  applied  leads  to  some  kind  of  new  manufacture,  or 
to  some  new  result,  it  is  only  a  double  use  of  that  which  was 
known  before. 

'^  S6.  Illustrations  of  this  distinction  may  be  seen  in  the  appli- 
cation of  well  known  medicines,  drugs,  and  chemical  substances 
upon  new  occasions,  or  for  new  specific  purposes.  If  it  is  dis- 
covered that  a  medicine  known  and  used  as  a  valuable  remedy 
in  one  class  of  diseases,  has  also  great  efficiency  in  curing 
another  and  different  disease,  there  is  a  new  application  of  a 
known  thing,  but  it  is  only  a  double  use  of  that  thing.^ 

*§>  87.  In  order  to  escape  the  objection  of  a  double  use,  it  is 
necessary  that  the  new  occasion  or  purpose  to  which  the  use 
of  a  known  thing  is  applied  should  not  be  merely  analogous  to 
the  former  occasions  or  purposes  to  which  the  same  thing  has 
been  applied.  There  is  a  very  material  distinction  between 
applying  a  new  contrivance  to  an  old  object,  and  an  old  contri- 
vance to  a  new  object.  The  former  may  be  patentable,  but  the 
latter  cannot  be,  when  the  new  object  is  merely  one  of  a  class 
possessing  a  common  analogy.  Thus,  where  a  certain  descrip- 
tion of  wheels  had  been  used  on  other  carriages  than  railway  car- 


'  In  Boulton  v.  Bull,  2  H.  Bl.  487,  Buller,  J.  said,  "  Suppose  the  world 
were  better  informed  than  it  is,  how  to  prepare  Dr.  Janes's  fever  powder, 
and  an  ingenious  physician  should  find  out  that  it  was  a  specific  cure  for  a 
consumption,  if  given  in  particular  quantities;  could  he  have  a  patent  for  the 
sole  use  of  Janes's  powders  in  consumptions,  or  to  be  given  in  particular  quan- 
tities ?  I  think  it  must  be  conceded  that  such  a  patent  would  be  void,  and  yet 
the  use  of  the  medicine  would  be  new,  and  the  effect  of  it  as  materially 
different  from  what  is  now  known,  as  life  is  from  death.  So  in  the  case  of 
a  late  discovery,  which,  as  far  as  experience  has  hitherto  gone,  is  said  to 
have  proved  efficacious,  that  of  the  medicinal  properties  of  arsenic  in  curing 
agues,  could  a  patent  be  supported  for  the  sole  use  of  arsenic  in  aguish  com- 
plaints. The  medicine  is  the  manufacture,  and  the  only  object  of  a  patent, 
and  as  the  medicine  is  not  new,  any  patent  for  it,  or  for  the  use  of  it,  would 
be  void." 


SUBJECT    OF     INVENTION    OR    DISCOVERY.  77 

riages,  Lord  Abinger,  C.  B.,  held  that  the  plaintiff  could  not  claim 
a  patent  merely  for  the  use  of  such  wheels  upon  railway  carriages ;' 

'  Losh  V.  Hague,  Webs.  Pat.  Cas.  207.  In  this  case  his  Lordship  said  to 
the  jury,  "  The  learned  counsel  has  stated  to  you,  and  very  properly,  and  it 
is  a  circurpstance  to  be  attended  to,  that  Mr.  Losh  has  taken  out  his  patent 
to  use  his  wheels  on  railways.  Now,  he  says,  the  wheels  made  by  Mr. 
Paton,  or  by  the  other  workmen  who  were  called  as  witnesses,  were  never 
applied  to  railways  at  all.  That  opens  this  question,  whether  or  not  a  man 
who  finds  a  wheel  ready  made  to  his  hand,  and  applies  that  wheel  to  a  rail- 
way, shall  get  a  patent  for  applyirig  it  to  a  railway.  There  is  some  nicety 
in  considering  that  subject.  The  learned  counsel  has  mentioned  to  you  a 
particular  case,  in  which  an  argand  lamp  burning  oil  having  been  applied  for 
singing  gauze,  somebody  else  afterwards  applied  a  lamp  supplied  with  gas 
for  singing  lace,  which  was  a  novel  invention,  and  for  which  an  argand 
lamp  is  not  applicable,  because  gas  does  not  burn  in  the  same  way  as  oil  in 
an  argand  lamp.  But  a  man  having  discovered  by  the  application  of  gas  he 
could  more  effectually  burn  the  cottony  parts  of  the  gauze  by  passing  it  over 
the  gas,  his  patent  is  good.  (Webs.  Pat.  Cas.  p.  98,  Hall's  Patent.)  That 
was  the  application  of  a  new  contrivance  to  the  same  purpose  ;  but  it  is  a 
different  thing  when  you  take  out  a  patent  for  applying  a  new  contrivance  to 
an  old  object,  and  applying  an  old  contrivance  to  a  new  object,  that  is  a 
very  different  thing  ;  if  I  am  wrong,  I  shall  be  corrected.  In  the  case  the 
learned  counsel  put,  he  says,  if  a  surgeon  goes  into  a  mercer's  shop,  and  sees 
the  mercer  cutting  velvet  or  silk  with  a  pair  of  scissors  with  a  knob  to  them, 
he  seeing  that  would  have  a  right  to  take  out  a  patent  in  order  to  apply  the 
same  scissors  to  cutting  a  sore,  or  a  patient's  skin.  I  do  not  quite  agree 
with  that  law.  I  think  if  the  surgeon  had  gone  to  him,  and  said,  "  I  see  how 
well  your  scissors  cut,"  and  he  said,  "  I  can  apply  them  instead  of  a  lancet, 
by  putting  a  knob  at  the  end,"  that  would  be  quite  a  different  thing,  and  he 
might  get  a  patent  for  that ;  but  it  would  be  a  very  extraordinary  thing  to 
say,  that  because  all  mankind  have  been  accustomed  to  eat  soup  with  a  spoon, 
that  a  man  could  take  out  a  patent  because  he  says  you  might  eat  peas  with 
a  spoon.  The  law  on  the  subject  is  this  ;  that  you  cannot  have  a  patent  for 
applying  a  well  known  thing  which  might  be  applied  to  fifty  thousand  differ- 
ent purposes,  for  applying  it  to  an  operation  which  is  exactly  analogous  to 
what  was  done  before.  Suppose  a  man  invents  a  pair  of  scissors  to  cut  cloth 
with,  if  the  scissors  were  never  invented  before,  he  could  take  out  a  patent 
for  it.  If  another  man  found  he  could  cut  silk  with  them,  why  should  {le 
take  out  a  patent  for  that  ?  I  must  own,  therefore,  that  it  strikes  me,  if  you 
are  of  opinion  this  wheel  has  been  constructed,  according  to  the  defendant's 
evidence,  by  the  persons  who  have  been  mentioned,  long  before  the  plaintiff's 
patent,  that  although  there  were  no  railroads  then  to  apply  them  to,  and  no 
7* 


78  LAW    OF    PATENTS. 

and  where  a  patent  claimed  as  the  invention  of  the  patentee  a 
process  of  curUng  pahn  leaf  for  mattresses,  but  it  appearing  that 
hair  had  long  been  prepared  by  the  same  process  for  the  same 
purpose,  Mr.  Justice  Story  held  it  to  be  a  mere  double  use  of 
an  old  process.' 

<§>  88.  When,  therefore,  the  principle  is  well  known,  or  the 
application  consists  in  the  use  of  a  known  thing  to  produce  a 
particular  effect,  the  question  will  arise,  whether  the  effect  is  of 
itself  entirely  new,  or  whether  the  occasion  only  upon  whicli 
the  particular  effect  is  produced,  is  new.  If  the  occasion  only 
is  new,  then  the  use  to  which  the  thing  is  applied,  is  simply 
analogous  to  what  had  been  done  before.  But  if  the  effect  it- 
self is  new,  then  there  are  no  known  analogous  uses  of  the  same 


demand  for  such  wheels,  yet  that  the  application  of  them  to  railroads  after- 
wards, by  Mr.  Losh,  will  not  give  effect  to  his  patent,  if  part  of  that  which 
is  claimed  as  a  new  improvement  by  him  is  in  fact  an  old  improvement, 
invented  by  other  people,  and  used  for  other  purposes ;  that  is  my  opinion  on 
the  law,  and  on  that  I  am  bound  to  direct  you  substantially." 

*  Howe  V.  Abbott,  2  Story's  R.  190,  193.  In  this  case  the  learned  Judge 
said,  "  In  the  first  place  it  is  admitted  on  all  sides,  that  there  is  no  novelty 
in  the  process,  by  which  the  stripping,  or  twisting,  or  curling  the  palm 
leaf,  is  accomplished.  The  same  process  of  twisting,  and  curling,  and 
baking,  and  steaming,  has  long  been  known  and  used  in  respect  to  hair  used 
for  beds,  mattresses,  sofas,  and  cushions.  It  is  therefore  the  mere  appli- 
cation of  an  old  process  and  old  machinery  to  a  new  use.  It  is  precisely  the 
same,  as  if  a  coffee-mill  were  now,  for  the  first  time,  used  to  grind  corn. 
The  application  of  an  old  process  to  manufacture  an  article,  to  which  it  had 
never  before  been  applied,  is  not  a  patentable  invention.  There  must  be 
some  new  process,  or  some  new  machinery  used,  to  produce  the  result.  If 
the  old  spinning  machine  to  spin  flax  were  now  first  applied  to  spin  cotton, 
no  man  could  hold  a  new  patent  to  spin  cotton  in  that  mode;  much  less  the 
right  to  spin  cotton  in  all  modes,  although  he  had  invented  none.  As,  there- 
fore. Smith  has  invented  no  new  process  or  machinery,  but  has  only  applied 
to  palm  leaf  the  old  process,  and  the  old  machinery  used  to  curl  hair,  it  does 
not  strike  me  that  the  patent  is  maintainable.  He  who  produces  an  old 
result  by  a  new  mode  or  process,  is  entitled  to  a  patent  for  that  mode  or 
process.  But  he  cannot  have  a  patent  for  a  result  merely,  without  using 
some  new  mode  or  process  to  produce  it." 


SUBJECT    OF     INVENTION    OR    DISCOVERY.  79 

thing,  and  the  process  may  constitute  such  an  art  as  will  be  the 
subject  of  a  patent.  Thus,  the  use  of  scissors  to  cut  one  sub- 
stance produces  a  particular  effect,  entirely  analogous  to  that 
produced  when  they  are  used  to  cut  another  substance  ;  the  ef- 
fect, therefore,  is  not  new.  But  the  use  of  gas  to  singe  off  the 
superfluous  fibres  of  lace,  was  the  use  of  an  agent  for  a  purpose 
not  analogous  to  any  other  purpose  for  which  the  same  agent 
had  ever  been  used  before  ;  and,  therefore,  the  effect,  as  pro- 
duced by  that  agent,  was  new.  Great  discrimination,  however, 
is  to  be  used,  in  determining  whether  the  analogy  is  such  as  to 
justify  the  inference  that  the  occasion  only  is  new,  and  that  the 
effect  is  not  new.  Of  course,  if  any  new  contrivances,  combi- 
*nations,  or  arrangements  are  made  use  of,  although  the  principal 
agents  employed  are  well  known,  those  contrivances,  combina- 
tions or  arrangements,  may  constitute  a  new  principle,  and  then 
the  application  or  practice  will  necessarily  be  new  also.^  But 
where  there  is  no  novelty  in  the  preparation  or  arrangement  of 
the  agent  employed,  and  the  novelty  professedly  consists  in  the 
application  of  that  agent,  being  a  well-known  thing  ;  or  in  other 
terms,  where  it  consists  in  the  practice  only,  the  novelty  of  that 
practice  is  to  be  determined,  according  to  the  circumstances,  by 
applying  the  test,  of  whether  the  result  or  effect  produced  is  a 
new  result  or  effect,  never  before  produced.^  If  a  new  manu- 
facture is  produced,  or  if  an  old  manufacture  is  produced  by 
new  means,  then  the  result  or  effect  is  new,  as  produced  by  that 
particular  means,  and  the  new  case  is  such  as  can  be  protected 
by  letters-patent.  But  if  only  an  old  manufacture  is  produced, 
or  an  old  result  is  attained  by  means  analogous  to  what  the 

'  As  where  anthracite  and  hot-air  blast  were  used  in  the  manufacture  of 
iron,  in  the  place  of  bituminous  coal  and  hot-air  blast;  arid  where  sail-cloth 
was  made  with  the  omission  of  an  ingredient  before  used,  that  is,  by  a  differ- 
ent combination  from  that  before  used. 

'  As  in  the  case  of  the  application  .of  bells  to  fire-engines,  to  be  rung  by 
the  motion  of  the  carriage,  for  the  purpose  of  alarms  or  notice ;  which 
Washington,  J.,  instructed  the  jury  might  be  a  subject  for  a  patent.  Park 
V.  Little,  3  Wash.  196.  The  application  of  steam  for  propelling  boats  is 
another  illustration  of  novelty  in  practice.     Ibid. 


go  LA.W    OF    PATENTS. 

same  means  have  produced  wlien  applied  the  same  way  in  other 
cases,  the  new  occasion  of  using  those  means  does  not  constitute 
a  case  that  can  be  protected  by  a  patent. 

<§,  89.  Our  statute  having  undertaken  to  classify  the  subjects 
of  patents  under  four  general  heads,  we  may  here  state  what  is 
supposed  to  be  embraced  in  each  of  them. 

«^  90.  I.  An  Art.  The  first  subject  of  a  patent  mentioned 
in  the  statute  is  "  any  new  and  useful  art,"  or  "  any  new  and 
useful  improvement  of  an  art."  This  term  embraces  the  useful 
as  distinguished  from  the  fine  arts.  It  applies  to  all  those  cases, 
where  the  application  of  a  principle  is  the  most  important  part 
of  the  invention,  and  where  the  machinery,  apparatus  or  other 
means  by  which  the  principle  is  applied,  is  incidental  only  and 
not  of  the  essence  of  the  invention.  It  applies  also  to  all  those 
cases,  where  the  result,  effect,  or  manufactured  article  is  old,  but 
the  invention  consists  in  a  new  process  or  method  of  producing 
such  result,  effect  or  manufacture.  But  where  machinery  or 
apparatus  of  any  kind  is  the  chief  subject  of  invention,  or  where 
the  result,  effect,  or  article  produced  is  new,  the  subject  of  the 
patent  will  fall  under  one  or  the  other  of  the  classes  designated 
in  the  statute  as  "  machine,"  "  manufacture,"  or  "  composition 
of  matter,"  according  to  its  principal  characteristics  and  objects. 

<§>  91.  A  case  which  occurred  before  Mr.  Justice  Washington 
furnishes  an  illustration  of  an  ''art,"  as  the  subject  of  a  patent. 
The  plaintiff  alleged  himself  to  be  the  inventor  of  a  new  and 
useful  improvement  in  the  printing  of  bank  notes,  which  was 
said  to  furnish  an  additional  security  against  counterfeiting. 
The  invention,  as  summed  up  in  his  specification,  was  "  to  print 
copperplate  on  both  sides  of  the  note  or  bill ;  or  copperplate  on 
one  side,  and  letter-press  on  the  other ;  or  letter-press  on  both 
sides  of  a  bank-note  or  bill,  as  an  additional  security  against 
counterfeiting."  The  art  of  printing  with  both  letter-press  and 
copperplate,  was  not  the  invention  of  the  plaintiff.     He  made 


SUBJECT     OF     INVENTION     OR     DISCOVERY.  81 

use  of  old  materials  and  processes,  in  a  new  manner,  for  the 
purpose  of  producing  a  new  effect,  namely,  a  new  security 
against  counterfeiting.  His  patent  therefore  was  for  the  new 
application  of  the  process  of  printing  by  copperplate  and  letter- 
press, by  printing  on  both  sides  of  the  note  ;  and  this  new  appli- 
cation was  held  by  the  court  to  be  an  art  within  the  terms  of 
the  statute.^ 

<§.  9-2.  Another  illustration  is  presented  by  a  patent  for  a  mode 
of  casting  iron  rollers  or  cylinders,  so  that  when  the  metal  was 
introduced  into  the  mould,  it  should  receive  a  rotatory  motion, 
by  which  the  dross  would  be  thrown  into  the  centre  instead  of 
upon  the  surface  of  the  cylinder.  This  was  effected  solely  by 
changing  the  direction  of  the  tube  which  conveyed  the  metal  to 
the  mould,  from  a  horizontal  or  perpendicular  position  to  a 
direction  approaching  a  tangent  of  the  cylinder.- 

<§)  93.  II.  A  Machine.  A  machine,  to  be  the  subject  of  a 
patent,  must  be  a  particular  construction  of  mechanism,  con- 
taining the  improved  method  of  producing  an  old  effect,  or  the 
method  of  producing  a  new  effect.  If  the  subject  of  the  inven- 
tion or  discovery  is  not  a  mere  function,  but  a  function  embodied 
in  some  particular  mechanism  whose  mode  of  operation  and  gen- 
eral structure  are  pointed  out,  and  which  is  designed  to  accom- 
plish a  particular  purpose,  function,  or  effect,  it  will  be  a 
machine,  in  the  sense  of  the  patent  lavv.^  A  machine  is  right- 
fully the  subject  of  a  patent,  when  well-known  effects  are  pro- 
duced by  machinery  entirely  new  in  all  its  combinations,  or 
when  a  new  or  an  old  effect  is  produced  by  mechanism,  of 
which  the   principle  or  modus  operandi  is  nevv.^     The  word 

'  Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9,  12. 

^  McCIurg  V.  Kingsland,  1  Howard,  204.  See  also  Gray  v.  James, 
Pelers's  Circ.  C.  R.  394. 

■''  Blanchard  v.  Sprague,  3  Sumner's  T?.  535,  540. 

*  Whittemore  v.  Cutter,  1  Gallis.  480;  Boulton  v.  Bull,  2  H.  BL463, 
468.     When  a  mode  of  doing  a  thing  is  referred  to  something  permanent,  it 


82  LAW     OF     PATENTS. 

"machine"  in  the  statute,  includes  new  combinations  of 
maciiines,  as  well  as  new  organizations  of  mechanism  for  a  sin- 
gle purpose.  There  may  be  a  patent  for  a  new  combination  of 
machines  to  produce  certain  effects,  whether  the  machines  con- 
stituting the  combination  be  new  or  old.  In  such  cases,  the 
thing  patented  is  not  the  separate  machines,  but  the  combina- 
tion.^ A  single  instance  of  such  a  combination  is  presented  by 
the  telescope,  in  which  a  convex  and  concave  glass  of  different 
refracting  powers  are  combined  to  make  the  object-glass.^ 
What  constitutes  a  claim  for  a  combination  only,  and  what  will 
be  a  claim  for  the  specific  parts  of  a  machine,  as  well  as  for  the 
combination,  is  a  question  of  construction  on  the  patent  and 
specification,  the  rules  for  which  will  be  stated  hereafter.  But 
it  is  proper  here  to  state  the  general  principles  applicable  to 
combinations  as  the  subject-matter. 

<§>  94.  Where  the  invention  consists  of  several  distinct  and 
independent  improvements  in  the  same  machine,  a  patent  may 
be  taken  for  them  in  the  aggregate,  and  such  a  patent  will  pro- 
tect each  of  the  improvements.  But  when  the  patent  is  for  a 
new  combination  of  existing  machinery  or  machines,  and  does 
not  specify  or  claim  any  improvements  or  inventions,  except  the 
combination,  the  subject-matter  of  the  patent  will  be  the  combi- 
nation alone,  and  the  making  of  the  separate  machines  will  not 
be  an  infrinsrement  of  it.-* 


is  properly  termed  an  engine  ;  when  to  something  fugitive,  a  method.  Per 
Heath,  J.,  in  Boulton  v.  Bull. 

'  Barrett  v.  Hall,  1  Mas.  474 ;  Evans  v.  Eaton,  3  Wheat.  454,  476,  506  ; 
Prouty  V.  Draper,  1  Story's  R.  568  ;  Park  v.  Little,  3  Wash.  196  ;  Pitts  v. 
Whitman,  2  Story's  R.  609  ;  Ames  v.  Howard,  1  Sumner,  482. 

*  Dolland's  case,  Webs.  Pat.  Cas.  42,  43. 

'  In  Barrett  v.  Hall,  1  Mas.  447,  474,  Mr.  Justice  Story  laid  down  the 
doctrine  thus  :  "  A  patent  may  be  for  a  new  combination  of  machines  to  pro- 
duce certain  effects;  and  this,  whether  the  machines,  constituting  the  com- 
bination, be  new  or  old.  But  in  such  case,  the  patent  being  for  the  combi- 
nation only,  it  is  no  infringement  of  the  patent  to  use  any  of  the  machines 
separately,  if  the  whole  combination  be  not  used  ;  for  in  such  case  the  thing 


SUBJECT     OF     INVENTION     OR     DISCOVERT.  83 

<§,  95.   The  statute  also  makes  a  new  and  useful  "improve- 
ment "  of  a  machine  the  subject  of  a  patent.     A  patent  for  the 

patented  is  not  the  separate  machines,  but  the  combination  ;  and  the  statute 
gives  no  remedy,  except  for  a  violation  of  the  thing  patented.  This  was  the 
doctrine  of  Mr.  Justice  "Washington  in  his  most  able  opinion  in  Evans  v. 
Eaton;  and  it  has  not  been  in  the  slightest  degree  shaken  in  the  Supreme 
Court,  (Evans  v.  Eaton,  3  Wheaton's  R.  454,  476,  506.)  I  hesitate  not 
one  moment  in  adopting  it,  as  established  on  solid  foundations.  It  has 
indeed  been  said,  that  where  there  is  a  patent  for  the  whole  of  a  machine, 
whoever  imitates  it,  either  in  whole  or  in  part,  is  subject  to  an  action  at  the 
suit  of  the  patentee.  (Bovill  v.  Moore,  2  Marsh.  R.  211.)  But  supposing 
this  doctrine  to  be  true  in  any  case  and  under  any  qualifications  (which  may 
well  be  doubted)  it  can  apply  only,  where  the  whole  machine  is  entirely 
new,  and  cannot  apply,  where  the  patent  is  limited,  by  its  very  terras,  to  the 
combination  of  several  machines."  In  the  subsequent  case  of  Moody  v. 
Fisk,  2  Mas.  115,  117,  the  same  learned  judge  said,  "Where  the  patent 
goes  for  the  whole  of  a  machine  as  a  new  invention,  and  the  machine  is  in  its 
structure  substantially  new,  any  person  who  pirates  a  part  of  the  machine, 
substantially  new  in  its  structure,  deprives  the  inventor  so  far  of  his  exclu- 
sive right  in  his  invention,  and  may  in  a  great  measure  destroy  the  value  of 
the  patent.  Where  the  patent  is  for  several  distinct  improvements  in  an 
existing  machine,  or  for  an  improved  machine,  incorporating  several  distinct 
improvements,  which  are  clearly  specified,  then  if  a  person  pirates  one  of  the 
improvements,  he  violates  the  exclusive  right  of  the  patentee,  for  the  patent 
is  as  broad  as  the  invention,  and  the  invention  covers  all  the  improvements ; 
and  it  is  a  wrong  done  to  the  patentee  to  deprive  him  of  his  exclusive  right 
in  any  of  his  improvements.  Where  a  patent  is  for  a  new  co7nbination  of 
existing  machinery,  or  machines,  and  does. not  specify  or  claim  any  improve- 
ments or  invention,  except  the  combination,  unless  that  combination  is  sub- 
stantially violated,  the  patentee  is  not  entitled  to  any  remedy,  although  parts 
of  the  machinery  are  used  by  another,  because  the  patent,  by  its  terms, 
stands  upon  the  combination  only.  In  such  a  case,  proof  that  the  machines, 
or  any  part  of  their  structure  existed  before,  forms  no  objection  to  the  patent, 
unless  the  combination  has  existed  before,  for  the  reason,  that  the  invention 
is  limited  to  the  combination.  And  yet  if  the  combination  be  not  wholly 
new,  but  up  to  a  certain  point  has  existed  before,  and  the  patentee  claims 
the  whole  combination  as  new,  instead  of  his  own  improvements  only,  as  by 
taking  out  a  patent  for  the  whole  machine,  doubtless  his  patent  is  void,  for  it/ 
exceeds  his  invention.  (Bovill  v.  Moore,  2  Marsh.  R.  211  ;  Davies  on  Pat., 
361,  398,  404,  411.)  But  if  there  be  different  and  distinct  improvements 
constituting  parts  of  the  combination,  which  are  specified  as  such  in  the 
patent  and  specification,  and  any  one  of  them  be  pirated,  the  same  rule  seems 


g4  LAW     OF     PATENTS. 

improvement  of  a  machine  is  the  same  thing  as  a  patent  for  an 
improved  machine.^  Improvement,  applied  to  machinery,  is 
where  a  specific  machine  already  exists,  and  an  addition  or 
alteration  is  made,  to  produce  the  same  effects  in  a  better  man- 
ner, or  some  new  combinations  are  added,  to  produce  new 
effects.^  In  such  cases,  the  patent  can  only  be  for  the  improve- 
ment, or  new  combination.^  The  great  question,  of  course, 
when  an  alleged  invention  purports  to  be  an  improvement  of  an 
existing  machine,  is  to  ascertain  whether  it  be  a  real  and  material 
improvement,  or  only  a  change  of  form.  In  such  cases,  it  is 
necessary  to  ascertain  with  as  much  accuracy  as  the  nature  of 
such  inquiries  admits,  the  boundaries  between  what  was  known 
and  used  before,  and  what  is  new,  in  the  mode  of  operation.'^ 
The  inquiry  therefore  must  be,  not  whether  the  same  elements 
of  motion,  or  the  same  component  parts  are  used,  but  whether 
the  given  effect  is  produced  substantially  by  the  same  mode  of 
operation,  and  the  same  combination  of  powers,  in  both 
machines  ;  or  whether  some  new  element,  combination,  or  fea- 
ture has  been  added  to  the  old  machine,  which  produces  either 
the  same  effect  in  a  cheaper  or  more  expeditious  manner,  or  an 
entirely  new  effect,  or  an  effect  that  is  in  some  material  respect 
superior,  though  in  other  respects  similar  to  that  produced  by  the 
old  machine.^ 

to  apply,  as  in  other  cases  where  part  of  an  invention  is  pirated,  for  the 
patent  then  shows  that  the  invention  is  not  limited  to  the  mere  combination, 
but  includes  the  particular  improvements  specified."  See  also  Evans  v. 
Eaton,  1  Peters's  Circ.  C.  R.  343  ;  Evans  v.  Eaton,  3  Wheat,  454,  476, 
506  ;  Prouty  v.  Draper,  1  Story,  568  ;  Prouty  v.  Ruggles,  16  Peters,  336 ; 
Howe  V.  Abbott,  2  Story's  R.  190  ;  Bean  v.  Smallwood,  2  Story's  R.  408. 

'  Per  Heath,  J.,  in  Boulton  v.  Bull,  2  H.  Bl.  463,  482  ;  and  per  Story,  J., 
in  Barrett  v.  Hall,  1  Mas.  475. 

'  Wliittemore  v.  Cutter,  1  Gallis.  480. 

'  Ibid  ;  Odiorne  v.  Winkler,  2  Gallis.  51. 

4  Whittemore  v.  Cutter,  1  Gallis.  478,  481.  Whether  an  improvement  is 
trifling  and  insignificant,  or  real  and  important,  is  a  question  for  the  jury. 
Losh  V.  Hague,  Webs.  Pat.  Cas.  205. 

*  Whittemore  v.  Cutter,  1  Gallis.  478;  Brunton  v.  Hawkes,  4  B.  & 
Aid.  540. 


SUBJECT     OF     INVENTION     OR     DISCOVERY.  85 

«§,  96.  This  inquiry  will  therefore  often  involve  the  question, 
whether  the  alleged  improved  machine  operates  upon  the  same 
principle  as  the  former  machine ;  or  in  other  terms,  whether  it 
produces  the  same  effect  by  the  same  mechanical  means,  or  by 
means  which  are  substantially  the  same.  One  machine  may 
employ  the  same  mechanical  power  in  the  same  way  as  another 
machine,  though  the  external  mechanism  may  be  apparently  dif- 
ferent. At  the  same  time  a  machine  may  have  an  external 
resemblance  to  another,  and  yet  may  operate  upon  a  different 
principle.^  It  is  therefore  necessary,  where  the  effect  is  the 
same,  to  determine  whether  the  modus  operandi,  the  peculiar 
device  or  manner  of  producing  the  effect,  is  substantially  the 
same.  Where  the  effect  is  different,  the  test  of  a  sufficient 
"  improvement,"  to  sustain  a  patent  will  be  the  character  and 
importance  of  the  effect  itself.^ 

'  Barrett  v.  Hall,  1  Mas.  470.  In  this  case,  Mr.  Justice  Story  said,  "  The 
true  legal  meaning  of  the  principle  of  a  machine,  with  reference  to  the  patent 
act,  is  the  peculiar  structure  or  constituent  parts  of  such  machine.  And, 
in  this  view,  the  question  may  be  very  properly  asked,  in  cases  of  doubt  or 
complexity,  of  skilful  persons,  whether  the  principles  of  two  machines  be  the 
same  or  different.  Now,  the  principles  of  two  machines  may  be  the  same, 
although  the  form  or  proportions  may  be  different.  They  may  substantially 
employ  the  same  power  in  the  same  way,  though  the  external  mechanism  be 
apparently  different.  On  the  other  hand,  the  principles  of  two  machines  may- 
be very  different,  although  their  external  structure  may  have  great  similarity 
in  many  respects.  It  would  be  exceedingly  difficult  to  contend,  that  a 
machine,  which  raised  water  by  a  lever,  was  the  same  in  principle  with  a 
machine,  which  raised  it  by  a  screw,  a  pulley  or  a  wedge,  whatever  in  other 
respects  might  be  the  similarity  of  the  apparatus." 

*  Whittemore  v.  Cutter,  1  Gallis.  478,  479,  480,  481.  In  this  case  the 
same  learned  judge  remarked,  "  It  is  difficult  to  define  the  exact  cases,  when 
the  whole  machine  may  be  deemed  a  new  invention,  and  when  only  an 
improvement  of  an  old  machine  ;  the  cases  often  approach  very  near  to  each 
other.  In  the  present  improved  state  of  machinery,  it  is  almost  impractica- 
ble not  to  employ  the  same  elements  of  motion,  and  in  some  particulars,  the 
same  manner  of  operation,  to  produce  any  new  effect.  Wheels,  with  their 
known  modes  of  operation  and  known  combinations,  must  be  of  very  exten- 
sive employment  in  a  great  variety  of  new  machines,  and  if  they  could  not, 
in  the  new  invention,  be  included  in  the  patent,  no  patent  could  exist  for  a 
whole  machine  embracing  such  mechanical  powers. 
8 


36  LAW    OF     PATENTS. 

<§>  97.  There   may   be    a   patent   for   an    improvement  of  a 
machine  that  is  itself  the  subject  of  an  existing  patent.     It  has 


"Where  a  specific  machine  already  exists  producing  certain  effects,  if  a 
mere  addition  is  made  to  such  machine,  to  produce  the  same  effects  in  a  better 
manner,  a  patent  cannot  be  taken  for  the  whole  machine,  but  for  the 
improvement  only.  The  case  of  a  watch  is  a  familiar  instance.  The  inven- 
tor of  the  patent  lever,  without  doubt,  added  a  very  useful  improvement  to 
it ;  but  his  right  to  a  patent  could  not  be  more  extensive  than  his  invention. 
The  patent  could  not  cover  the  whole  machine  as  improved,  but  barely  the 
actual  improvement.  The  same  illustration  might  be  drawn  from  the  steam 
engine,  so  much  improved  by  Messrs.  Watt  and  Boulton.  In  like  manner, 
if  to  an  old  machine,  some  new  combinations  be  added,  to  produce  new  effects, 
the  right  to  a  patent  is  limited  to  the  new  combinations.  A  patent  can,  in 
no 'case,  be  for  an  effect  only,  but  for  an  effect  produced  in  a  given  manner, 
or  by  a  peculiar  operation.  For  instance,  no  patent  can  be  obtained  for  the 
admeasurement  of  time,  or  the  expansive  operations  of  steam  ;  but  only  for  a 
new  mode  or  new  application  of  machinery,  to  produce  these  effects  ;  and 
therefore,  if  new  effects  are  produced  by  an  old  machine  in  its  unaltered 
state,  I  apprehend  that  no  patent  can  be  legally  supported  ;  for  it  is  a  patent 
for  an  effect  only. 

On  the  other  hand,  \i well-known  effects  are  produced  by  machinery  in  all 
its  combinations  entirely  new,  a  patent  may  be  claimed  for  the  whole  machine. 
So  if  the  principles  of  the  machine  are  new,  either  to  produce  a  new  or  an  old 
effect,  the  inventor  may  well  entitle  himself  to  the  exclusive  right  of  the 
whole  machine.     By  the  principles  of  a  machine,  (as  these  words  are  used  in 
the  statute)  is  not  meant  the  original  elementary  principles  of  motion,  which 
philosophy  and  science  have  discovered,  but  the  modus  operandi,  the  peculiar 
device  or  manner  of  producing  any  given  effect.     The  expansive  powers  of 
steam,  and  the  mechanical  powers   of  wheels,   have   been  understood   for 
many  ages  ;  yet  a  machine  may  well  employ  either  the  one  or  the  other,  and 
yet  be  so  entirely  new,  in  its  mode  of  applying  these  elements,  as  to  entitle 
the  party  to  a  patent  for  his  whole  combination.    The  intrinsic  difficulty  is  to 
ascertain,  in  complicated  cases  like  the  present,  the  exact  boundaries  between 
what  was  known  and  used  before,  and  what  is  new,  in  the  mode  of  operation. 
The  present  'machine  is  to  make  cotton  and  woolen  cards.     These  were 
not  only  made  before  the  present  patent,  by  machinery,  but  also  by  machi- 
nery, which,  at  different  times,  exhibited  very  different  stages  of  improve- 
ment.    The  gradual  progress  of  the  invention,  from  the  first  rude  attempts  to 
the  present  extraordinary  perfection,  from  the  slight  combination  of  simple 
principles  to  the  present  wonderful  combinations,  in  ingenuity  and  intricacy 
scarcely  surpassed  in  the  world,  has  been  minutely  traced  by  the  witnesses 
on  the  stand 


SUBJECT     OF     INVENTION     OR    DISCOVERY.  87 

been  held  in  England,  that  a  patent  including  the  subject-matter 
of  a  patent  still  in  force,  is  valid,  if  the  improvement  only  is 
claimed  in  the  specification.  In  such  cases,  the  new  patent  will 
come  into  force,  after  the  expiration  of  the  old  one,  or  it  may  be 
applied  by  using  a  license  under  the  former  patent,  or  by  pur- 
chasing the  specific  machine  which  the  former  patent  covers, 
before  the  expiration  of  the  latter.^ 

The  jury  then  are  to  decide,  whether  the  principles  of  Mr.  Whitteraore's 
machine  are  altogether  new,  or  whether  his  machine  be  an  improvement  only 
on  those,  which  have  been  in  use  before  his  invention.  I  have  before 
observed,  that  the  principles  are  the  mode  of  operation.  If  the  same  effects 
are  produced  by  two  machines  by  the  same  mode  of  operation,  the  principles 
of  each  are  the  same.  If  the  same  effects  are  produced,  but  by  combinations 
of  machinery  operating  substantially  in  a  different  manner,  the  principles  are 
different." 

'  Crane  v.  Price,  Webs.  Pat.  Cas.  393,  413.  In  this  case.  Sir  W.  C.  Tin- 
dall,  C.  J.,  said,  "  Now  it  is  further  argued,  that  in  point  of  law,  no  patent 
can  be  taken  out  which  includes  the  subject-matter  of  a  patent  still  running 
or  in  force.  No  authority  was  cited  to  support  this  proposition,  and  the  case 
which  Avas  before  Lord  Tenterden,  and  in  which  he  held,  that  where  an 
action  was  brought  for  an  infringement  of  improvements  in  a  former  patent 
granted  to  another  person,  and  still  in  force,  that  the  plaintiff  must  produce 
the  former  patent  and  specification  ;  that  at  least  affords  a  strong  evidence 
that  the  second  patent  was  good.  (Lewis  v.  Davis,  3  Car.  &  P.  502.)  The 
case  oi  Harmar  v.  Plaync,  (14  Ves.  jr.,  130;  11  East,  101  ;  Dav.  Pat.  Cas. 
311  ;  Fox,  ex  parte,  1  Ves.  &  B.  67,)  is  a  clear  authority  on  the  same  point ; 
and  upon  reason  and  principle  there  appears  to  be  no  objection.  The  new 
patent,  after  the  expiration  of  the  old  one,  will  be  free  from  every  objection, 
and  whilst  the  former  exists,  the  new  patent  can  be  legally  used  by  the  pub- 
lic by  procuring  a  license  from  Neilson,or  by  purchasing  the  apparatus  from 
him,  or  some  of  his  agents  ;  and  the  probability  of  the  refusal  of  a  license  to 
any  one  applying  for  it,  is  so  extremely  remote,  that  it  cannot  enter  into  con- 
sideration as  a  ground  of  legal  objection." 

See  also  Fox,  ex  parte,  1  V.  &  B.  67.  Mr.  Webster  puts  this  very  clear 
illustration  :  "  For  suppose  a  particular  article,  starch  for  instance,  to  be  the 
subject  of  letters-patent,  and  that  all  the  starch  in  the  country  was  patent 
starch  ;  there  are  attached  to  the  m.aking  and  selling  of  that  article  certain 
exclusive  privileges  ;  but  the  individual  who  has  purchased  it  of  the  patentee 
has  a  right  to  sell  it  again,  and  to  use  it  at  his  will  and  pleasure  ;  the  exclu- 
sive privileges  are  in  respect  of  that  particular  portion  of  the  article  so  sold, 
at  an  end,  and  do  not  pursue  it  through  any  subsequent  stage  of  its  use  and 


88  LAW     OF     PATENTS. 

<5,  98.  It  has  also  been  held,  that  in  an  action  for  an  infringe- 
ment of  a  patent  professing  to  be  an  improvement  on  a  former 
patent,  the  specification  of  that  former  patent  must  be  read. 
But  it  is  not  material  whether  a  machine,  made  according  to 
that  specification  of  the  first  patent,  would  be  useful  or  not,  if  it 
be  shown  that  a  machine,  constructed  according  to  the  subse- 
quent patent,  is  useful.^ 

<§,  99.  In  all  cases  of  alleged  improvements  in  machinery,  the 
test  of  sufficiency  may  be  found  in  the  dictum  of  Buller  J., 
that,  "  if  there  be  anything  material  and  new,  that  will  be  an 
improvement  of  the  trade,  that  will  be  sufficient  to  support  a 
patent."  ^ 

»^  100.  III.  A  Manufacture.  It  has  been  stated  in  a  former 
part  of  this  chapter,  that  the  term  "  manufacture  "  was  used  in 
the  English  statute,  21  Jac.  1,  to  denote  anything  made  by  the 
hand  of  man  ;  so  that  it  embraces,  in  the  English  law,  machinery, 
as  well  as  substances  or  fabrics  produced  by  art  and  industry.^ 


existence,  otherwise  every  purchaser  of  starch  would  be  obliged,  according 
to  the  terms  of  the  letters-patent,  to  have  a  license  in  writing,  under  the  hand 
and  seal  of  the  patentee  ;  the  absurdity  of  which  is  manifest.  Hence  it  is 
obvious,  that  if  a  person  legally  acquires,  by  license  or  purchase,  title  to  that 
which  is  the  subject  of  letters-patent,  he  may  use  it  or  improve  upon  it  in 
whatever  manner  he  pleases  ;  in  the  same  manner  asif  dealing  with  property 
of  any  other  kind." 

'  Lewis  V.  Davis,  Webs.  Pat.  Cas.,  488,  489. 
*  The  K'lngv.  Arkwright,  Webs.  Pat.  Cas.,  71. 

3  In  Boulton  V.  Bull,  Heath  J.  said,  "  The  statute  21  Jac.  1,  prohibits 
all  monopolies,  reserving  to  the  King  by  an  express  proviso,  so  much  of  his 
ancient  prerogative,  as  shall  enable  him  to  grant  letters  patent  and  grants  of 
privilege,  for  the  term  of  fourteen  years  and  under,  of  the  sole  working  or 
making  of  any  manner  of  new  manvfacfures  within  this  realm,  to  the  true  and 
first  inventor  and  inventors  of  such  manufactures.  What  then  falls  within 
the  scope  of  the  proviso  ?  Such  manufactures  as  are  reducible  to  two  classes. 
The  first  includes  machinery,  the  second  substances,  (such  as  medicines) 
formed  by  chemical  and  other  processes,  where  the  vendible  substance  is  the 
thing  produced,  and  that  which  operates  preserves  no  permanent  form.     In 


SUBJECT    OF    INVENTION    OR    DISCOVERV.  89 

<§.  101.  We  have  seen  also  that  it  came,  by  construction,  to 
inchide  the  process  of  making  a  thing,  or  the  art  of  carrying  on 
a  manufacture ;  so  that  all  the  various  objects,  which  are  now 
held  in  England  to  be  the  subjects  of  letters-patent,  are  included 
under  this  term,  which  alone  saves  them  out  of  the  prohibition 
of  the  statute  of  monopolies.^ 

<§.  102.  Our  statute,  however,  having  made  an  enumeration  of 
the  different  classes  of  subjects  which  in  England  are  held  to  be 
patentable,  it  is  to  be  presumed  that  this  term  was  used  to 
describe  one  of  these  classes  only,  namely,  fabrics  or  substances 
made  by  the  art  or  industry  of  man,  not  being  machinery.^     It 

the  first  class  the  machine,  and  in  the  second  the  substance  produced,  is  the 
subject  of  the  patent.  I  approve  of  the  term  manufacture  in  the  statute, 
because  it  precludes  all  nice  refinements  ;  it  gives  us  to  understand  the  reason 
of  the  proviso,  that  it  was  introduced  for  the  benefit  of  trade.  That  which  is 
the  subject  of  a  patent,  ought  to  be  specified,  and  it  ought  to  be  that  which 
is  vendible,  otherwise  it  cannot  be  a  manufacture." 

In  Hornblower  v.  Boulton,  8  T.  R.  99,  Lord  Kenyon  defined  the  term  as 
"  something  made  by  the  hands  of  man."  In  the  King  v.  Wheeler,  2  B.  & 
Aid.  349,  Abbott  L.  C.  J.  defined  it  thus  :  "  The  word  "  manufactures" 
has  been  generally  understood  to  denote  either  a  thing  made,  which  is  useful 
for  its  own  sake,  and  vendible  as  such,  as  a  medicine,  a  stove,  a  telescope, 
and  many  others,  or  to  mean  an  engine  or  instrument,  or  some  part  of  an 
engine  or  instrument,  to  be  employed,  either  in  the  making  of  some  pre- 
viously known  article,  or  in  some  other  useful  purpose,  as  a  stocking  frame,  or 
a  steam  engine  for  raising  water  from  mines.  Or  it  may  perhaps  extend  also 
to  a  new  process  to  be  carried  on  by  known  implements,  or  elements,  acting 
upon  known  substances,  and  ultimately  producing  some  other  known  sub- 
stance, but  producing  it  in  a  cheaper  or  more  expeditious  manner,  or  of  a 
better  and  more  useful  kind." 

'  Ante  ^  69,  71,  7-3,  73,  74.     See  also  Hindmarch  on  Patents,  p.  80. 

*  Perhaps  the  best  general  definition  of  the  term  "  manufacture,"  as  the 
subject  of  a  patent,  would  be  any  new  combination  of  old  materials,  constitu- 
ting a  new  result  or  production,  in  the  form  of  a  vendible  article,  not  being 
machinery.  In  one  sense,  all  materials  are  old  ;  as  the  amount  of  matter  in 
existence  does  not  depend  on  the  will  or  the  skill  of  man,  whatever  he  uses 
is,  in  one  sense,  an  old  material.  In  this  sense,  therefore,  all  that  he  does, 
in  producing  a  new  manufacture,  is  to  bring  old  materials  into  a  new  com- 
bination, and  by  so  doing  to  produce  a  new  result  in  matter.     It  is  this  new 


90  LAW     OF    PATENTS. 

may  sometimes  require  a  nice  discrimination,  to  determine 
whether  one  of  these  classes  does  not  run  into  the  other,  in  a 
given  case ;  as  for  instance,  when  a  tool  or  instrument  of  a 
novel  or  improved  construction  is  produced,  to  be  used  in  con- 
nection with  other  machinery,  or  to  be  used  separately.  As  an 
article  of  merchandise,  found  and  sold  separately  in  the  market, 
such  a  production  would  be  a  manufacture  ;  but  regarded  with 
reference  to  its  use  and  intended  adaptation,  it  might  be  consid- 
ered as  a  machine,  or  part  of  a  machine.  In  determining,  in 
such  cases,  how  the  patent  for  the  article  should  be  claimed,  it 
would  probably  be  correct  to  range  it  under  the  one  or  the  other 
of  these  classes,  according  to  the  following  test.  If  the  article 
is  produced  and  intended  to  be  sold  and  used  separately,  as  a 
merchantable  commodity,  and  the  merit  of  it,  as  an  invention, 
consists  in  its  being  a  better  article  than  had  been  before  known, 
or  in  its  being  produced  by  a  cheaper  process,  then  it  may  prop- 
erly be  considered  simply  as  a  manufacture.  But  if  its  merit 
appears  only  after  its  incorporation  with  some  mechanism  with 
which  it  is  to  be  used,  and  consists  in  producing,  when  com- 
bined with  such  mechanism,  a  new  effect,  then  it  should  be 
regarded  as  a  machine,  or  an  improvement  of  an  existing  machine. 
These  distinctions,  however,  are  not  vitally  important  to  be  taken 
in  the  patent  itself,  since  it  is  not  necessary  to  the  validity  of  a 
patent,  that  the  thing  should  be  described  with  entire  accuracy 
as  "a  machine"  or  "a  manufacture."  If  the  thing  itself  is 
correctly  described,  and  it  appears  to  be  novel  and  useful,  and 
unites  all  the  other  requisites  of  the  statute,  it  may  be  left 
to  general  interpretation  to  determine,  whether  the  subject-mat- 
ter ranges  itself  under  the  one  or  the  other  of  these  classes,  or 
whether  it  partakes  of  the  characteristics  of  both.     But  if  the 


combination,  carried  into,  or  evinced  by  a  new  result  or  production,  that  is 
the  subject  of  a  patent.  The  use  of  all  the  materials  in  other  combinations, 
may  have  been  known  before;  but  if  they  are  used  in  anew  combination, 
producing  a  new  result,  there  will  be  a  good  subject  for  a  patent  for  a  "  man- 
ufacture," as  there  is  in  respect  to  "machinery"  when  the  same  thing  is 
effected.     See  Cornish  r.  Keene,  Webs.  Pat.  Cas.  512,  517. 


SUBJECT    OF    INVENTION    OR    DISCOVERY.  91 

subject-matter  be  neither  a  machine,  nor  a  manufacture,  or 
composition  of  matter,  then  it  must  be  an  art.  There  can  be  no 
vaUd  patent,  except  it  be  for  a  thing  made,  or  for  the  art  or 
process  of  making  a  thing. 

«§>  103.  IV.  A  Composition  of  Matter.  The  last  class  of 
patentable  subjects  mentioned  in  the  statute  is  described  by  the 
term  "  composition  of  matter."  It  includes  medicines,  compo- 
sitions used  in  the  arts,  and  other  combinations  of  substances 
intended  to  be  sold  separately.  In  such  cases,  the  subject-mat- 
ter of  the  patent  may  be  either  the  composition  itself,  the  article 
produced,  or  it  may  be  the  mode  or  process  of  compounding  it. 
Generally  speaking,  the  patent  covers  both,  because  if  the  com- 
position is  itself  new,  the  process  by  which  it  is  made  must  also 
be  new,  and  the  law  will  protect  both  as  the  subjects  of  invention. 
But  if  the  article  itself  be  not  new,  but  the  patentee  has  discov- 
ered merely  a  new  mode  or  process  of  producing  it,  then  his 
patent  will  not  be  for  a  new  "  composition  of  matter,"  but  for  a 
new  "  art  "  of  making  that  particular  thing. 

<§)  104.  With  regard  to  this  class  of  subjects,  it  is  sufficient  to 
observe,  that  the  test  of  novelty  must,  of  course,  be,  not  whether 
the  materials  of  which  the  composition  is  made,  are  new,  but 
whether  the  combination  is  new.  Although  the  ingredients 
may  have  been  in  the  most  extensive  and  common  use,  for  the 
purpose  of  producing  a  similar  composition,  if  the  composition 
made  by  the  patentee  is  the  result  of  different  proportions  of  the 
same  ingredients,  or  of  the  same  and  other  ingredients,  the 
patent  will  be  good.^  The  patentee  is  not  confined  to  the  use 
of  the  same  precise  ingredients  in  making  his  compound,  pro- 
vided all  the  different  combinations  of  which  he  makes  use  are 
equally  new.^ 


Ryan  v.  Goodwin,  3  Sumner's  R.  514,  518. 
Ibid. 


92  LAW     OF    PATENTS. 

<^  105.  A  new  class  of  objects  has,  by  a  recent  statute,  been 
made  the  subjects  of  letters-patent.  These  are  new  and  original 
Designs  for  a  manufacture  of  metal  and  other  materials ;  for 
the  printing  of  woollen,  silk,  cotton  or  other  fabrics  ;  for  busts, 
statues  or  bas-relief,  or  composition  in  alto  or  basso-relievo  ;  for 
any  impression  or  ornament,  or  to  be  placed  on  any  article  of 
manufacture  in  marble  or  other  material ;  for  any  new  and  use- 
ful pattern,  print  or  picture,  to  be  in  any  manner  attached  to,  or 
fixed  on  any  article  of  manufacture ;  for  any  new  or  original 
shape  or  configuration  of  any  article  of  manufacture ;  all  such 
desio-ns  not  being  previously  known  or  used  by  others.  Patents 
for  these  subjects  are  to  be  issued  on  the  like  application  and 
proceedings,  as  those  prescribed  in  other  cases  of  patents,  for 
the  term  of  seven  years,  and  on  payment  of  one  half  the  fee 
required  by  the  general  patent  act.^ 

<^  106.  The  patents  thus  granted  relate  to  the  forms  im- 
pressed upon  the  material  constituting  particular  articles  of 
manufacture,  and  to  the  marks  adopted  by  tradesmen,  whether 
patterns,  prints  or  pictures,  to  distinguish  their  own  manufac- 
tures. They  thus  occupy  a  kind  of  middle  ground  between 
copyrights  and  patents,  as  patents  for  useful  inventions  have 
hitherto  been  classed.  Indeed,  the  exclusive  right  to  impress 
upon  matter  a  particular  form,  or  to  aflix  a  particular  device  to 
a  bale  of  merchandise,  is  very  closely  analogous  to  the  exclusive 
right  to  print  a  particular  book  or  engraving,  if  it  is  not  pre- 
cisely the  same  right.  The  same  general  principles,  at  least, 
must  be  resorted  to,  to  determine  the  identity  between  two  forms 
of  matter,  as  forms,  or  between  two  devices,  as  devices,  which 

'  Act  of  Cong.  Aug.  29,  1842,  §  3,  5.  This  is  an  act  in  addition  to  the 
general  Patent  Act  of  1S3G  :  but  the  5th  section  provides  an  action  for  penal- 
ties, for  the  infringement  of  this  class  of  patentable  subjects,  in  place  of  the 
action  for  damages  provided  in  respect  of  other  patents  by  the  act  of  1836. 
The  remedy  in  equity,  by  injunction,  is  not  expressly  granted;  but  it  exists 
undoubtedly,  both  by  force  of  the  provision  in  the  Act  of  1836,  §  17,  and  of 
the  general  principles  of  equity  jurisprudence.  • 


SUBJECT  OF  INVENTION  OR  DISCOVERY.  93 

determine  the  identity  of  two  books  or  engravings.  The  lead- 
ing principle,  in  such  comparisons,  is  that  which  shows  that  the 
one  thing  is  a  colorable  imitation  of  another,  when  there  is  not 
an  exact  resemblance  ;  and  although  this  principle  has  its  place 
in  that  system  of  patent  law,  which  is  applied  to  machinery, 
arts,  manufactures  or  compositions  of  matter,  it  is  more  fully 
developed  and  of  more  frequent  application  in  the  law  of  copy- 
right, as  applied  to  books  and  engravings.^ 

'  These  principles  may  be  found  developed  in  a  work,  in  which  I  have 
endeavored  to  state  the  Law  of  Copyright. 


CHAPTER  III. 

UNITY    OF    THE    SUBJECT-MATTER. 

<§.  107.  The  several  Acts  of  Congress  on  the  subject  of  Pa- 
tents, evidently  require  that  the  subject-matter  of  a  patent 
should  be  one  invention  or  discovery.  The  Act  of  1836,  c. 
357,  <§>  6,  speaks  of  an  invention  or  discovery  as  the  subject  of 
a  patent,  and  not  of  inventions  or  discoveries  ;  and  throughout 
this  and  the  subsequent  statutes,  the  subject-matter  is  always 
described  or  referred  to  in  the  singular  and  not  in  the  plural. 
It  is,  therefore,  an  important  inquiry,  how  far  several  distinct 
things  can  be  made  the  subject  of  one  patent. 

<§>  108.  In  the  first  place,  it  is  manifest  that  where  there  are 
two  distinct  and  independent  inventions,  which  have  no  neces- 
sary connection  with  each  other,  but  which  are  applicable  to 
different  objects  and  purposes,  they  cannot  be  united  in  one  pa- 
tent ;  for  the  statute  affords  no  warrant  for  including  more  than 
one  subject-matter  in  one  patent.  In  the  second  place,  if  two 
distinct  subject-matters  could  be  included  in  one  patent,  great 
inconvenience  and  confusion  would  arise,  both  to  the  patentee 
and  the  public,  from  the  application  of  the  rule  of  law  which 
renders  void  the  whole  patent,  where  a  part  of  the  subject-matter 
turns  out  not  to  be  original.  Still,  these  positions  do  not  deter- 
mine when  several  apparently  distinct  objects  constitute  one 
subject-matter;  or  whether  there  is  any  leading  principle  which 
will  enable  us  to  draw  the  line  between  one  collection  of  objects 
as  constituting  one  subject-matter,  and  another  collection  of  ob- 
jects as  constituting  more  than  one  subject-matter. 


UNITY     OF     THE    SUBJECT-MATTER.  95 

<§)  109.  The  object  which  the  inventor  proposes  to  accomphsh 
will  always  be  the  main  guide,  by  which  to  determine  whether 
his  subject-matter  is  a  unit  or  not.  It  may  consist  of  several 
distinct  inventions,  or  several  machines  capable  of  useful  opera- 
tion separately  ;  but  if  the  inventor  has  brought  them  together 
for  a  purpose  which  can  only  be  effected  by  their  union,  that 
purpose  indicates  the  true  character  of  the  subject-matter,  when 
they  are  included  in  one  patent,  which  goes  for  the  accomplish- 
ment of  that  purpose.  But  if  the  patent  goes  for  the  combina- 
tion, or  the  purpose  to  be  effected  by  the  several  inventions 
united  in  one  operation,  and  also  goes  for  the  distinct  purposes 
which  each  invention  is,  by  itself,  capable  of  effecting,  it  is  clear, 
that  several  subject-matters  are  embraced  in  one  patent.^ 

>§.  110.  If,  indeed,  the  patentee  describes  several  distinct  and 
independent  parts  of  an  invention,  which  are  intended  to  be 
used  in  combination,  and  he  is  the  first  and  original  inventor  of 
each  of  them,  his  patent  will  cover  all  the  parts  as  well  as  the 
combination,  and  the  use  of  any  one  of  them  by  another  person, 
will  be  an  infringement.  But  where  the  patentee  is  not  the 
inventor  of  the  several  things  used  in  the  combination,  but  the 
combination  itself  is  the  true  subject-matter  of  his  patent,  then 
the  use  of  any  number  of  those  things  not  amounting  to  the 
same  combination,  is  no  infringement.- 

*  In  Barrett  v.  Hall,  1  Mas.  447,  475,  Mr.  Justice  Story  laid  down  the 
doctrine  thus  :  "  A  patent  under  the  general  Patent  Act,  cannot  embrace 
various  distinct  improvements  or  inventions ;  but  in  such  case  the  party  must 
take  out  separate  patents.  If  the  patentee  has  invented  certain  improved 
machines,  which  are  capable  of  a  distinct  operation,  and  also  has  invented 
a  combination  of  those  machines  to  produce  a  connected  result,  the  same  pa- 
tent cannot  at  once  be  for  the  combination  and  for  each  of  the  improved  ma- 
chines ;  for  the  inventions  are  as  distinct  as  if  the  subjects  were  entirely  dif- 
ferent. A  very  significant  doubt  has  been  expressed  on  this  subject  by  the 
Supreme  Court ;  and  I  am  persuaded  that  the  doubt  can  never  be  success- 
fully removed."     See  Evans  v.  Eaton,  3  Wheat.  454,  506. 

*In  Moody  v.  Fiske,  2  Mas.   112,  117,  the  same  learned  judge  said: 
'  Where  the  patent  goes  for  the  whole  of  a  machine  as  a  new  invention,  and 


96  LAW    OF     PATENTS. 

<§,  111.  It  has  also  been  held  that  a  patent  may  be  taken  for 
several  improvements  on  one  and  the  same  machine,  or  for  two 


the  machine  is  in  its  structure  substantially  new,  any  person  who  pirates  a 
part  of  the  machine,  substantially  new  in  its  structure,  deprives  the  inventor 
so  far  of  his  exclusive  right  in  his  invention,  and  may,  in  a  great  measure, 
destroy  the  value  of  the  patent.  When  the  patent  is  for  several  improve- 
ments in  an  existing  machine,  or  for  an  improved  machine,  incorporating 
several  distinct  improvements,  which  are  clearly  specified,  then  if  a  person 
pirates  one  of  the  improvements,  he  violates  the  exclusive  right  of  the  pa- 
tentee, for  the  patent  is  as  broad  as  the  invention,  and  the  invention  covers 
all  the  improvements  ;  and  it  is  a  wrong  done  to  the  patentee  to  deprive 
him  of  his  exclusive  right  in  any  of  his  improvements.  Where  the  patent 
is  for  a  new  combination  of  existing  machinery,  or  machines,  and  does  not 
specify  or  claim  any  improvements  or  invention,  except  the  combination,  un- 
less that  combination  is  substantially  violated,  the  patentee  is  not  entitled  to 
any  remedy,  although  parts  of  the  machinery  are  used  by  another,  because 
the  patent,  by  its  terms,  stands  upon  the  combination  only.  In  such  a  case, 
proof  that  the  machines,  or  any  part  of  their  structure  existed  before,  forms 
no  objection  to  the  patent,  unless  the  combination  has  existed  before,  for  the 
reason,  that  the  invention  is  limited  to  the  combination.  And  yet  if  the  com- 
bination itself  be  not  wholly  new,  but,  up  to  a  certain  point,  has  existed  be- 
fore, and  the  patentee  claims  the  whole  combination  as  new,  instead  of  his 
own  improvements  only,  as  by  taking  out  a  patent  for  the  whole  machine, 
doubtless  his  patent  is  void,  for  it  exceeds  his  invention.  But  if  there  be 
different  and  distinct  improvements  constituting  parts  of  the  combination, 
which  are  specified  as  such  in  the  patent  and  specification,  and  any  one  of 
them  be  pirated,  the  same  rule  seems  to  apply  as  in  other  cases  where  part 
of  an  invention  is  pirated,  for  the  patent  then  shows  that  the  invention  is  not 
limited  to  the  mere  combination,  but  includes  the  particular  improvements 
specified. 

It  is  often  a  serious  difficulty,  from  the  obscure  language  of  the  specifica- 
tion, to  ascertain  what  is  the  nature  and  extent  of  the  invention  claimed  by 
the  patentee.  Whether  his  patent  be  valid  or  not,  must  materially  depend 
upon  the  accuracy  and  distinctness  with  which  the  invention  is  stated.  But 
in  all  cases  where  the  patentee  claims  anything  as  his  own  invention,  in  his 
specification,  courts  of  law  cannot  reject  the  claim;  and  if  included  in  the 
patent,  and  found  not  to  be  new,  the  patent  is  void,  however  small  or  unim- 
portant such  asserted  invention  may  be.  This  leads  me  to  the  first  point 
made  at  the  bar;  as  to  which,  it  appears  to  me  clear,  both  upon  principle 
and  authority,  that  where  a  patentee  in  his  specification  states  and  sums  up 
the  particulars  of  his  invention,  and  his  patent  covers  them,  he  is  confined  to 
such  summary  ;  and  he  cannot  afterwards  be  permitted  to  sustain  his  patent 


UNITY     OF     THE     SUBJECT-MATTER.  97 

machines,  which  are  invented  by  the  patentee,  and  conduce  to 
the  same  common  purpose  and  object,  although  they  are  capa- 
ble of  a  distinct  use  and  application,  without  being  united  to- 
gether. But  a  patent  cannot  be  taken  for  two  distinct  machines 
not  conducing  to  the  same  common  purpose  or  object,  but 
designed  for  totally  distinct  and  independent  objects.'     Hence, 

by  showing  that  some  part  which  he  claims  in  his  summing  up  as  his  inven- 
tion, though  not  in  fact  his  invention,  is  of  slight  value  or  importance  in  his 
patent.  His  patent  covers  it  ;  and  if  it  be  not  new,  the  patent  must  be  void. 
Here  the  plaintiff  claims  a  particular  position  of  machinery  as  his  invention, 
and  it  clearly  appears  in  evidence,  that  the  position  is  not  new.  It  has  ex- 
isted before,  not  in  machines  exactly  like  the  present,  but  in  machines  ap- 
plied to  analogous  purposes,  viz.,  in  machines  for  roping  cotton  ;  and  applied 
for  the  same  purpose  as  the  plaintiff  applies  them.  Without  doubt,  he  sup- 
posed that  he  was  the  first  inventor,  but  that  was  his  mistake,  and  will  not 
help  the  case.  The  objection  therefore  is  fatal.  I  wish  it  to  be  understood 
in  this  opinion,  that  though  several  distinct  improvements  in  one  machine 
may  be  united  in  one  patent,  it  does  not  follow  that  several  improvements  in 
two  different  machines,  having  distinct  and  independent  operations,  can  be  so 
included.  Much  less  that  the  same  patent  may  be  for  a  combination  of  dif- 
ferent machines,  and  for  distinct  improvements  in  each." 

'  In  Wyeth  v.  Stone,  1  Story's  R.  273,  287,  Mr.  Justice  Story  said  :  "  But 
it  has  been  said,  that  if  each  of  the  machines  patented  is  independent  of  the 
other,  then  separate  patents  should  have  been  taken  out  for  each  ;  and  that 
they  cannot  both  be  joined  in  one  and  the  same  patent ;  and  so  there  is  a 
fatal  defect  in  the  plaintiff's  title.  And  for  this  position  the  doctrine  stated 
in  Barrett  v.  Hall,  1  Mason,  R.  473,  and  Evans  v.  Eaton,  3  Wheat.  R. 
454,  506,  (see  also  Phillips  on  Patents,  pp.  214,  215,  216)  is  relied  on. 
1  agree,  that  under  the  general  patent  acts,  if  two  machines  are  patented, 
which  are  wholly  independent  of  each  other,  and  distinct  inventions,  for 
unconnected  objects,  then  the  objection  will  lie  in  its  full  force,  and  be  fatal. 
The  same  rule  would  apply  to  a  patent  for  several  distinct  improvements 
upon  different  machines,  having  no  common  object  or  connected  operation. 
For,  if  different  inventions  might  be  joined  in  the  same  patent  for  entirely 
different  purposes  and  objects,  the  patentee  would  be  at  liberty  to  join  as 
many  as  he  might  choose,  at  his  own  mere  pleasure,  in  one  patent,  which 
seems  to  be  inconsistent  with  the  language  of  the  patent  acts,  which  speak 
of  the  thing  patented,  and  not  of  the  things  patented,  and  of  a  patent  for  an 
invention,  and  not  of  a  patent  for  inventions;  and  they  direct  a  specific  sum 
to  be  paid  for  each  patent.  Besides :  there  would  arise  great  difficulty  in 
applying  the  doctrine  of  the  common  law  to  such  cases.  Suppose  one  or 
more  of  the  supposed  inventions  was  not  new,  would  the  patent  at  the 
9 


93  LAW     OF     PATENTS. 

it  would  seem  to  follow  that  where  a  patentee  has  invented  two 
distinct  and  different  machines,  each  of  which  will  accomplish 

common  law  be  void  in  toto,  or  only  as  to  that  invention,  and  good  for 
the  rest?  Take  the  case  of  a  patent  for  ten  different  machines,  each 
applicable  to  an  entirely  different  object,  one  to  saw  wood,  another  to 
spin  cotton,  another  to  print  goods,  another  to  make  paper,  and  so  on;  if 
any  one  of  these  machines  were  not  the  invention  of  the  patentee,  or  were 
in  public  use,  or  were  dedicated  to  the  public,  before  the  patent  was  grant- 
ed, upon  the  doctrines  of  the  common  law,  the  patent  would  be  broader 
than  the  invention,  and  then  the  consideration  therefor  would  fail,  and 
the  patent  be  void  for  the  whole.  But  if  such  distinct  inventions  could 
be  lawfully  united  in  one  patent,  the  doctrine  would  lead  to  consequences 
most  perilous  and  injurious  to  the  patentee ;  for,  if  any  one  of  them  were 
known  before,  or  the  patent  as  to  one  of  them  was  void,  by  innocent  mis- 
take, or  by  priority  of  invention,  that  would  take  away  from  him  the  title  to 
all  the  others,  which  were  unquestionably  his  own  exclusive  inventions.  On 
the  other  hand,  if  the  doctrine  were  relaxed,  great  inconvenience  and  even 
confusion  might  arise  to  the  public,  not  only  from  the  difficulty  of  distin- 
guishing between  the  different  inventions  stated  in  the  patent  and  specifica- 
tion, but  also  of  guarding  themselves  against  fraud  and  imposition  by  the 
patentee,  in  including  doubtful  claims  under  cover  of  others,  which  were 
entirely  well  founded.  In  construing  statutes  upon  such  a  subject,  these 
considerations  are  entitled  to  no  small  weight.  At  least,  they  show  that 
there  is  no  ground,  founded  in  public  policy,  or  in  private  right,  which  calls 
for  any  expanded  meaning  of  the  very  words  of  the  statute  ;  and  that  to 
construe  them  literally  is  to  construe  them  wisely.  It  is  plain,  also,  that  the 
Act  of  1837,  ch.  45,  in  the  ninth  section,  contemplated  the  rule  of  the  com- 
mon law  as  being  then  in  full  force  :  and  therefore,  it  seeks  to  mitigate  it, 
and  provides,  '  that  whenever,  by  mistake,  accident,  or  inadvertence,  and 
without  any  intent  to  defraud  or  mislead  the  public,  any  patentee  shall  have, 
in  his  specification,  claimed  to  be  the  original  and  first  inventor  or  discoverer 
of  any  material  or  substantial  part  of  the  thing  invented,'  (not  of  different 
things  invented)  '  of  which  he  was  not  the  first  and  original  inventor,  and 
shall  have  no  legal  or  just  right  to  claim  the  same,  in  every  such  case  the 
patent  shall  be  good  and  valid  for  so  much  of  the  invention  or  discovery,' 
(not  inventions  or  discoveries)  'as  shall  be  truly  and  bond  fide  his  own; 
provided  it  shall  be  a  material  and  substantial  part  of  the  thing  patented,  and 
be  definitely  distinguishable  from  the  other  parts,  so  claimed  without  right 
as  aforesaid.'  This  language  manifestly  points  throughout  to  a  definite  and 
single  invention,  as  the  'thing  patented,'  and  does  not  even  suppose,  that 
one  patent  could  lawfully  include  divers  distinct  and  independent  inventions, 
having  no  common  connection  with  each  other,  nor  any  common  purpose. 


TTNITY     OF     THE     SUBJECT-MATTER.  99 

the  same  end,  he  may  unite  them  in  one  patent,  as  being  dis- 
tinct modes  by  which   he  contemplates  the  application  of  his 

It  may,  therefore,  fairly  be  deemed  a  legislative  recognition  and  adoption  of 
the  general  rule  of  law  in  cases,  not  within  the  exceptive  provision  of  the 
Act  of  1837. 

And  this  is  what  I  understand  to  have  been  intended  by  the  court  in  the  lan- 
guage used  in  Barrett  tJ.  Hall,  1  Mason,  447,475,478.  It  was  there  said,  (p. 
475)  that  "  a  patent  under  the  general  Patent  Act  cannot  embrace  various  dis- 
tinct improvements  and  inventions ;  but  in  such  a  case  the  party  must  take  out 
separate  patents.  If  the  patentee  has  invented  certain  improved  machines, 
which  are  capable  of  a  distinct  operation,  and  has  also  invented  a  combination  of 
these  machines  to  produce  a  connected  result,  the  same  patent  cannot  at  once  be 
for  the  combination,  and  for  each  of  the  improved  machines  ;  for  the  inven- 
tions are  as  distinct  as  if  the  subjects  were  entirely  different."  And  again, 
(p.  478,)  "  If  the  patent  could  be  constructed  as  a  patent  for  each  of  the 
machines  severally,  as  well  as  for  the  combination,  then  it  would  be  void, 
because  two  separate  inventions  cannot  be  patented  in  one  patent."  It  is 
obvious,  construing  this  language  with  reference  to  the  case  actually  before 
the  court,  that  the  court  were  treating  of  a  case,  where  each  of  the  patented 
machines  might  singly  have  a  distinct  and  appropriate  use  and  purpose,  un- 
connected with  any  common  purpose,  and  therefore  each  was  a  different 
inrention.  In  Moody  r.  Fiske,  2  Mason,  112,  119,  the  judge  alluded  still 
more  closely  to  the  distinction,  and  said  :  "  I  wish  it  to  be  understood,  in 
this  opinion,  that  though  several  distinct  improvements  in  one  machine  may 
be  united  in  one  patent;  (yet)  it  does  not  follow,  that  several  improve- 
ments in  two  different  machines,  having  distinct  and  independent  operations, 
can  be  so  included  ;  much  less,  that  the  same  patent  may  be  for  a  combina- 
tion of  different  machines,  and  for  distinct  improvements  in  each."  It  is 
perhaps  impossible  to  use  any  general  language  in  cases  of  this  sort,  stand- 
ing almost  upon  the  metaphysics  of  the  law,  without  some  danger  of  its 
being  found  susceptible  of  an  interpretation  beyond  that,  which  was  then  in 
the  mind  of  the  court.  The  case  intended  to  be  put  in  each  of  these  cases 
was  of  two  different  machines,  each  applicable  to  a  distinct  object  and  pur- 
pose, and  not  connected  together  for  any  common  object  or  purpose.  And, 
understood  in  this  way,  it  seems  to  me,  that  no  reasonable  objection  lies 
against  the  doctrine. 

Construing,  then,  the  present  patent  to  be  a  patent  for  each  machine,  as  a 
distinct  and  independent  invention,  but  for  the  same  common  purpose,  and 
auxiliary  to  the  same  common  end,  I  do  not  perceive  any  just  foundation  for 
the  objectiorl  made  to  it.  If  one  patent  may  be  taken  for  different  and  dis- 
tinct improvements  made  in  a  single  machine,  which  cannot  well  be  doubted 
or  denied,  how  is  that  case  distinguishable  in  principle  from  the  present? 


100  I-AW     OF     PATENTS. 

invention,  one  of  them  being  preferable  in  certain  circumstances 
to  the  other,  and  vice  versa.  In  this  way,  the  unity  of  the 
subject-matter  is  preserved ;  for  the  subject-matter  consists,  in 
such  a  case,  of  the  object  to  be  accomplished,  and  of  the  several 
modes  by  which  it  may  be  accomplished. 

<§)  112.  There  is  also  another  aspect  in  which  what  we  have 
called  the  unity  of  a  patent  must  be  preserved.    It  is  impossible 

Here,  there  are  two  machines,  each  of  which  is  or  may  be  justly  auxiliary 
to  produce  the  same  general  result,  and  each  is  applied  to  the  same  common 
purpose.  Why,  then,  may  not  each  be  deemed  a  part  or  improvement  of 
the  same  invention'?  Suppose  the  patentee  had  invented  two  distinct  and 
different  machines,  each  of  which  would  accomplish  the  same  end,  why  may 
he  not  unite  both  in  one  patent,  and  say,  I  deem  each  equally  useful  and 
equally  new,  but,  under  certain  circumstances,  the  one  may,  in  a  given  case, 
be  preferable  to  the  other  ?  There  is  a  clause  in  the  Patent  Acts,  which 
requires,  that  the  inventor,  in  his  specification  or  description  of  his  invention, 
should  "  fully  explain  the  principle  and  the  several  modes,  in  which  he  has 
contemplated  the  application  of  that  principle  or  character,  by  which  it  may 
be  distinguished  from  other  inventions."  Now,  this  would  seem  clearly  to 
show,  that  he  might  lawfully  unite  in  one  patent  all  the  modes,  in  which  he 
contemplated  the  application  of  his  invention,  and  all  the  different  sorts  of 
machinery,  or  modifications  of  machinery,  by  which,  or  to  which  it  might  be 
applied;  and  if  each  were  new,  there  would  seem  to  be  no  just  ground  of 
objection  to  his  patent,  reaching  them  all.  (Act  of  1793,  ch.  55,  §  3  ;  Act 
of  1836,  ch.  357.)  A  fortiori,  this  rule  would  seem  to  be  applicable,  where 
each  of  the  machines  is  but  an  improvement  or  invention  conducing  to  the 
accomplishment  of  one  and  the  same  general  end. 

But  let  us  take  the  case  in  another  view,  (of  which  it  is  certainly  suscepti- 
ble,) and  consider  the  patent  as  a  patent,  not  for  each  machine  separately, 
but  for  them  conjointly,  or  in  the  aggregate,  as  conducing  to  the  same  com- 
mon end  ;  if  each  machine  is  new,  why  may  they  not  both  be  united  in  one 
patent,  as  distinct  improvements'?  I  profess  not  to  see  any  good  reason  to 
the  contrary.  If  they  may  be  so  united,  and  were  both  new,  then,  upon  the 
principles  established  in  Moody  v.  Fiske,  (2  Mason's  R.  112,  117,  118,  119,) 
it  is  not  necessary,  in  order  to  maintain  a  suit,  that  there  should  be  a  viola- 
tion of  the  patent  throughout.  It  is  sufficient,  if  any  one  of  the  invented 
machines  or  improvements  is  wrongfully  used  ;  for  that,  fro  tanto,  violates 
the  patent.  In  this  view,  therefore,  the  use  of  the  cutter  of  the  inventor, 
without  any  use  of  the  saw,  would  be  a  sufficient  ground  to  support  the 
present  bill,  if  it  were  not  otherwise  open  to  objection." 


UNITY    OF    THE    SUBJECT-MATTER.  101 

that  any  invention  should  have  been  produced  both  as  the  sepa- 
rate invention  of  a  party,  and  as  the  joint  invention  of  the  same 
party  and  another  or  others.  It  must  have  been  either  the 
separate  and  sole  invention  of  the  party,  or  tiie  joint  invention 
of  the  same  party,  acting  with  others.  A  joint  invention  may 
be  a  good  subject-matter  of  a  patent,  for  the  statute  supposes 
the  case  of  a  joint  invention  and  provides  for  it.  But  if  an 
invention,  which,  in  point  of  fact,  was  made  by  more  than  one 
person,  is  made  the  subject  of  a  patent  by  any  one  of  them,  he 
cannot  take  the  oath  required  by  the  statute,  declaring  himself 
to  be  the  original  and  first  inventor,  or,  if  he  does  take  it,  his 
patent  will  be  void.  On  the  other  hand,  if  his  invention  was 
the  sole  production  of  one  party,  a  joint  patent  for  it  encounters 
the  same  objection.  It  is  necessary,  therefore,  in  all  cases,  that 
the  subject-matter  should  be  claimed  as  the  sole  invention  of 
one  party,  if  such  is  the  fact,  or  as  the  joint  invention  of  two  or 
more  parties,  if  it  was  invented  by  more  than  one.^ 

'  In  Barrett  v.  Hall,  1  Mas.  447,  472,  the  reasons  are  thus  stated  ;  "  In 
the  first  place,  a  joint  patent  may  well  be  granted  upon  a  joint  invention. 
There  is  no  difficulty  in  supposing  in  point  of  fact,  that  a  complicated  inven- 
tion may  be  the  gradual  result  of  the  combined  mental  operations  of  two 
persons  acting  together,  pari  fassu,  in  the  invention.  And  if  this  be  true, 
then  as  neither  of  them  could  justly  claim  to  be  the  sole  inventor  in  such  a 
case,  it  must  follow,  that  the  invention  is  joint,  and  that  they  are  jointly 
entitled  to  a  patent.  And  so  are  the  express  words  of  the  patent  act  (Act  of 
21st  February,  1793,  ch.  11,  ^  1,)  which  declares,  that  if  any  person  or  per. 
sons  shall  allege,  that  he  or  they  have  invented,  &c.,  a  patent  shall  be  granted 
to  him  or  them  for  the  invention. 

In  the  next  place,  a  joint  patent  cannot  be  sustained  upon  a  sole  invention 
of  either  of  the  patentees,  for  the  patent  act  gives  no  right  to  a  patent, 
except  to  the  inventors,  and  requires  an  oath  from  the  party,  who  claims  a 
patent,  that  he  is  the  true  inventor. 

In  the  next  place,  a  joint  patent  for  an  invention  is  utterly  inconsistent 
with  several  patents  for  the  same  invention  by  the  same  patentees.  For  it  is 
impossible,  that  any  person  can  be,  at  the  same  time,  the  joint  and  the  sole 
inventor  of  the  same  invention.  If,  therefore,  each  of  the  joint  patentees 
obtain  a  several  patent  for  the  same  invention,  as  his  own  exclusive  invention  ; 
and  afterwards,  without  surrendering  the  first  patent,  they  obtain  a  joint 
patent  for  the  same  as  a  joint  invention,  either  the  former  sole  patents  are 
9* 


102  LAW     OF     PATENTS. 

<§,  113.  An  inventor  cannot  have  two  subsisting  valid  patents^ 
at  the  same  time,  for  the  same  invention.  The  first  patent, 
while  it  remains  in  full  force  and  unrepealed,  is  an  estoppel  to 
any  subsequent  patent  by  the  same  person  for  the  same  inven- 
tion.^ 


void,  or  the  joint  patent  is  void.  For,  besides  the  apparent  inconsistency  of 
the  patents,  if  all  could  be  sustained,  then  a  recovery  upon  the  joint  patent 
would  be  no  bar  to  a  suit  upon  the  several  patents  ;  and  the  parties  might 
obtain  a  double  recompense  for  the  same  infringement.  There  is  an  addi- 
tional reason,  which  deserves  great  consideration  ;  and  that  is,  that  if  sole 
and  joint  patents  could  be  sustained  by  the  same  parties  for  the  same  inven- 
tion, they  might  be  successively  taken  out,  so  that  the  term  of  the  exclusive 
right  might  be  prolonged  for  a  great  length  of  time,  instead  of  being  limited 
to  fourteen  years.  I  am  therefore  clearly  of  opinion,  that  a  grant  of  a  subse- 
quent patent  for  an  invention  is  an  estoppel  to  the  patentee  to  set  up  any 
prior  grant  for  the  same  invention,  which  is  inconsistent  with  the  terms  of 
the  last  grant.  And  I  have  very  great  doubts,  whether  where  a  patent  is 
once  granted  to  any  person  for  an  invention,  he  can  legally  acquire  any  right 
under  a  subsequent  patent  for  the  same  invention,  unless  his  first  patent  be 
repealed  for  some  original  defect,  so  that  it  might  truly  be  said  to  be  a  void 
patent. 

In  the  next  place,  if  several  patents  are  taken  out  by  several  patentees  for 
a  several  invention,  and  the  same  patentees  afterwards  take  out  a  joint  patent 
for  the  same  as  a  joint  invention,  the  parties  are  not  absolutely  estopped  by 
the  former  patents  from  asserting  the  invention  to  be  joint;  but  the  former 
patents  are  very  strong  evidence  against  the  joint  invention.  The  reason  of 
this  doctrine  is,  not  that  estoppels  are  odious  in  the  law,  but  that  a  party  may 
innocently  mistake,  as  to  the  extent  of  his  own  claims,  and  though  a  sole  and 
joint  invention,  by  the  same  persons  of  the  same  thing,  cannot  exist  in  fact, 
yet  a  party  may  suppose  that  he  has  invented,  what  in  truth  has  been  partly 
suggested  by  another  mind." 

'  Odiorne  v.  The  Amesbury  Nail  Factory,  2  Mason,  28.  Barrett  v.  Hall, 
1  Mason,  447,  473. 


CHAPTER    IV. 

THE    PERSONS    ENTITLED    TO  TAKE,  RENEW,  OR  EXTEND  PATENTS. 

*§.  114.  We  have  seen  that  the  person  or  persons  entitled  to 
receive  a  patent  can  only  be  the  inventor  or  inventors  of  the 
thing  proposed  to  be  patented.  Our  statute  does  not  admit  of 
a  patent  for  the  introduction  of  an  invention  from  abroad,  how- 
ever meritorious.  The  patentee  must  be  the  inventor,  and  the 
original  and  first  inventor.^  But  where  the  inventor  has  died 
before  making  application  for  a  patent,  the  statute  provides  that 
the  right  of  applying  for  and  obtaining  a  patent  shall  devolve 
on  his  executor  or  administrator,  in  trust  for  his  heirs  or  de- 
visees, and  that  the  oath  or  affirmation  of  original  invention 
shall  be  varied  accordingly.- 

>§»  115.  As  the  statute  is  silent  on  the  subject  of  citizenship, 
it  follows,  that  an  alien,  who  is  the  first  and  original  inventor 
of  any  patentable  subject,  may  apply  for  and  obtain  a  patent, 
in  the  same  manner  as  a  citizen  of  the  United  States.  The 
eighth  section  of  the  Act  of  1836,  c.  357,  seems  to  contem- 
plate the  case  of  an  application  by  an  alien,  by  providing  that 
the  fact  of  a  patent  having  been  previously  taken  out  in  a  for- 
eign country,  shall  not  debar  the  original  and  true  inventor 
from  a  patent  in  the  United  States,  where  such  foreign  patent 
has  not  been  taken  out,  and  the  invention  published  more  than 
six  months  next  before  the  filing  of  the  specification  and  draw- 

'  Reed  v.  Cutter,  1  Story's  R.  590,  596;  Act  of  1836,  c.  357,  ^  6. 
*  Act  of  1836,  c.  357,  ^  10. 


104  LAW    OF     PATENTS. 

ing.^  The  subsequent  Act  of  1839,  c.  88,  <§>  6,  has  somewhat 
altered  this  provision,  by  declaring  that  no  person  shall  be  de- 
barred from  receiving  a  patent,  by  reason  of  the  invention  hav- 
ing been  patented  in  a  foreign  country  more  than  six  months 
prior  to  his  application,  jyrovided,  that  the  same  shall  not  have 
been  introduced  into  public  and  common  use,  in  the  United 
States,  prior  to  the  application  for  such  patent.^ 

<§.  116.  So  that  under  these  two  statutes,  the  rights  of  aliens 
are  these.  An  alien,  who  is  the  original  and  first  inventor  of  a 
patentable  subject,  may  obtain  a  patent  therefor  in  the  United 
States,  under  the  same  circumstances  as  a  citizen,  if  he  has  not 
patented  his  invention  in  a  foreign  country.  If,  however,  he 
has  taken  out  a  patent  for  his  invention  and  published  the  same 
abroad,  if  he  applies  for  a  patent  in  the  United  States,  he  can 
obtain  it,  provided  the  subject  has  not  been  introduced  into 
public  and  common  use  in  the  United  States,  before  his  appli- 
cation, notwithstanding  he  may  have  received  a  patent  for  it 
abroad  more  than  six  months  prior  to  his  application  here.  But 
if  his  application  in  the  United  States  is  made  within  six  months 
of  the  date  or  publication  of  his  foreign  patent,  and  yet  the  subject 
has  in  the  meantime  been  introduced  into  public  and  common 
use  in  this  country,  it  is  not  quite  clear  whether  the  statutes, 
taken  together,  mean  to  give  him  a  patent,  notwithstanding  such 
public  use,  or  whether  they  leave  his  case  open  to  the  general 
objection  of  a  prior  public  use.  It  would  seem  to  have  been 
the  intention  of  Congress,  in  these  provisions,  to  leave  the  space 
of  six  months  open  to  foreigners,  where  they  are  original  and 
true  inventors,  and  not  to  exclude  them  by  reason  of  the  intro- 
duction of  their  inventions  within  that  period,  commencing 
from  the  date  of  the  patent  or  publication  in  a  foreign  country.^ 

'  Act  of  1836,  c.  357,  ^  8.  The  sixth  section  of  the  statute  also  contem- 
plates the  case  of  a  patentee  being  an  alien,  by  requiring  the  applicant  to 
make  oath  of  what  country  he  is  a  citizen. 

*  Act  of  1839,  c.  88,  ^  6. 

'  In  the  case  of  interfering  applications,  where  the  question    is  one  of 


EXTENSION  OF  PATENTS.  105 

<§,  117.  The  eighteenth  section  of  the  Act  of  1836  provides 
for  an  extension  of  a  patent  beyond  the  term  of  its  Hmitation, 
on  the  apphcation  of  the  patentee,  in  the  mode  therein  pre- 
scribed. It  has  been  determined,  that  an  administrator  is  com- 
petent to  apply  for  and  receive  this  grant,  although  the  patentee 
had  disposed  of  all  his  interest  in  the  then  existing  patent.^ 

<^  118.  The  question  whether  an  assignee  under  the  first  term 
of  the  patent  can  claim  or  exercise  any  right  or  interest  under 
the  renewed  patent  has  been  much  discussed  ;  but  it  has  been 
finally  determined  by  a  majority  of  the  Supreme  Court  of  the 
United  States,  that  the  extension  does  not  enure  to  the  benefit 
of  assignees  under  the  original  patent,  but  to  the  benefit  of  the 
administrator,  when  granted  to  an  administrator,  in  his  capacity 
as  such  ;  but  that  assignees,  who  were  in  the  use  of  the  patented 
machine  at  the  time  of  the  renewal,  have  still  a  right  to  use  it, 
though  not  to  make  and  sell  it.^ 

priority  of  invention  between  an  alien  and  a,  citizen  of  the  United  States,  the 
dale  of  the  enrolment  of  the  foreign  patent,  and  not  that  of  the  sealing,  is 
considered  by  the  patent  office  as  the  date  of  the  foreign  patent,  beyond 
which  the  foreign  ajiplicant  is  not  permitted  to  go  in  order  to  prove  the  pri- 
ority of  his  invention. 

'  Wilson  V.  Rousseau,  1  Howard,  646 ;  Woodworth  v.  Sherman,  3 
Story's  R.  171,  172  ;  Brooks  v.  Bicknell,  3  M'LeanR.  250,255,260  ;  Wood- 
worth  V.  Stone,  3  Story's  R.  749. 

'  In  Woodworth  v.  Sherman,  3  Story's  R.  171,  173,  Mr.  Justice  Story 
held  that  the  assignee  or  grantee,  under  the  original  patent,  does  not  acquire 
any  right  under  the  extended  patent,  unless  such  right  be  expressly  conveyed 
to  him  by  the  patentee.  The  opinion  delivered  by  him  upon  this  point  was 
as  follows  :  "  When  these  cases  were  heard  before  me  at  chambers,  I  ex- 
pressed my  opinion  briefly  on  the  three  points  made  at  the  argument,  not 
then  having  time  to  go  into  them  at  large.  I  do  not  desire  to  say  anything 
further  upon  the  first  two  points.  But  the  last  point  involves  a  question  of 
so  much  general  importance,  that  it  has  appeared  to  me  a  duty,  which  I  owe 
to  the  public,  as  well  as  to  the  parties,  to  give  at  large  the  reasons  which  in- 
fluenced my  opinion,  and  governed  the  decision.  I  do  this  the  more  readily, 
because  I  have  not  been  able  to  find  among  my  papers  any  statement,  re- 
'duced  by  me  to  writing,  of  the  particular  circumstances  attending  the  case  in 
Maine,  to  which  I  have  already  alluded,  or  any  report  of  the  grounds  on 


106  LAW    OF    PATENTS. 

<§)  119.  It  was  also  held,  in  the  same  case,  that  a  covenant 
by  the  patentee,  made  prior  to  the  law  authorizing  extensions, 

V 

which  ihat  decision  was  made.  If  I  prepared,  after  the  term,  any  written 
opinion,  (of  which  I  am  not  certain)  it  has  been  mislaid,  and  after  consider- 
able search,  I  have  not  been  able  to  find  any.  I  rather  think,  from  my  gen- 
eral recollection,  that  the  question  arose  incidentally  upon  a  renewed  patent, 
granted  by  a  special  act  of  congress,  after  the  first  patent  had  regularly  ex- 
pired, and  before  the  passage  of  the  patent  act  of  1838,  ch.  357.  It  may, 
perhaps,  have  been  in  a  case  involving  the  validity  of  the  renewed  patent, 
granted  by  the  act  of  congress  of  3d  of  March,  1835,  to  Eastman,  for  "  a 
new  and  useful  improvement,  called  the  circular  saw  clapboard  machine." 
But  of  this  I  am  not  quite  sure,  and  I  have  not  within  my  reach,  at  this  mo- 
ment, the  means  of  verifying  the  conjecture.  The  doctrine,  however,  which 
I  then  held,  was,  that  every  license  and  assignment  under  the  old  laws, 
before  the  patent  act  of  1S36,  expired  with  the  limitation  of  the  original 
patent,  unless  it  was  expressly,  in  terms,  so  granted  as  to  be  applicable  to 
any  renewal  of  the  patent  afterwards  ;  for,  otherwise,  the  licensee's  or 
assignee's  right  was  necessarily  bounded  by  the  same  limits  as  that  of  the 
licensor  or  assignee,  that  is  to  say,  by  the  original  terra  granted  by  the  pa- 
tent to  the  licensor  or  patentee.  The  doctrine  proceeded  upon  the  plain 
ground,  afiirmed  by  the  common  law,  that  a  man  can  pass  by  a  grant  or 
assignment  only  that  which  he  now  possesses,  and  which  is  in  existence  at 
the  time,  either  actually  or  potentially.  His  grant  or  assignment  is,  there- 
fore, by  its  natural  interpretation,  limited  to  the  rights  and  things  which  are 
then  in  existence,  and  which  he  has  power  to  grant  unless  he  uses  other 
language,  which  imports  an  intention  to  grant  what  he  does  not  now  possess, 
and  what  is  not  now  in  existence.  In  the  latter  case,  the  language  does 
not  even  then  operate  strictly  as  an  assignment  or  grant,  but  only  as  a  cove- 
nant or  contract,  which  a  court  of  equity  will  carry  into  full  effect,  when  the 
right  or  thing  comes  in  esse.  Thus  it  is  laid  down  in  Corayn's  Digest,  (As- 
signments, c.  1,  c.  2,  c.  3 ;  Id.  Grant,  D.)  and  better  authority  could  not  be, 
for,  as  was  well  observed  by  Lord  Kenyon,  he  was  the  greatest  lawyer  of 
his  day  in  all  Westminster  Hall,  that  an  assignment  or  grant  cannot,  at  law, 
be  of  a  chose  in  action,  bare  right,  or  possibility.  And  in  a  case  in  Lord 
Hobart's  Reports,  it  was  said,  that  although  a  man  may,  by  grant  or  assign- 
ment, assign  all  the  wool  then  growing  on  the  backs  of  the  sheep  then  owned 
by  him  ;  yet  he  cannot  grant  or  assign  the  wool  that  shall  grow  upon  the 
backs  of  the  sheep  which  he  shall  hereafter  buy.  (Grantham  v.  Hawley, 
Hob.  R.  132.)  And  this  doctrine  was  fully  recognized  by  Lord  Eldon  in 
the  case  of  Curlis  v.  Amber,  1  Jac.  &  Walk.  506,  512.  But  I  need  not 
dwell  on  this  point,  because  it  eame  under  the  full  consideration  of  the  court 
in  Mitchell  v.  Winslow,  2  Story's  R.  630,  639  to  644,  where  the  principal  au- 


EXTENSION  OF  PATENTS.  107 

that  the  covenantee  should  have  the  benefit  of  any  improve- 
ment in  the  machinery,  or  alteration,  or  renewal  of  the  patent, 

thorities  were  collected  and  commented  upon  at  large ;  so  that  the  only 
remedy  for  the  licensee  or  assignee,  where  a  grant  or  assignment  has  been 
made  to  him  and  his  heirs,  of  a  right  to  a  thing  not  then  in  existence,  but 
which  is  to  operate  in  fuluro,  when  the  right  is  created  or  comes  m  esse,  is 
in  equity,  by  way  of  specific  enforcement  of  a  covenant  or  contract.  (See 
Story  Eq.  Jur.  ^  1010  to  ^  1041,  3d  edit. 

Now  it  appears  to  me,  that  this  doctrine  is  expressly  applicable  to  licenses 
and  assignments' under  the  patent  act  of  1836,  and,  indeed,  as  I  think,  a 
fortiori  applicable,  because  the  whole  design  of  the  18th  section  of  the  act, 
providing  fur  renewed  patents,  is,  in  its  terms,  exclusively  cnnfined  to  the 
original  inventor,  and  to  be  for  his  sole  benefit,  and  not  for  the  benefit  of  his 
licensee  or  assignee;  and,  therefore,  that  section  is  to  receive  a  correspond- 
ent construction  in  favor  of  the  inventor  alone,  unless  the  particular  clause 
of  the  section,  which  I  shall  presently  consider,  dees,  by  natural  or  neces- 
sary implication,  confer  the  right  upon  the  licensee  or  assignee. 

Let  us,  then,  for  this  purpose,  examine  the  18th  section  of  the  Patent 
Act  of  1836.  It  enacts,  that,  whenever  any  patentee  (not  any  assignee) 
shall  desire  an  extension  of  his  patent  beyond  the  term  of  its  limitation,  he 
may  make  application  therefor  to  the  commissioner  of  the  patent  office,  set- 
ting forth  the  grounds  thereof;  and  then,  after  prescribing  the  notice,  &c., 
to  be  given  of  the  application,  it  provides  that  the  secretary  of  state,  the 
commissioner  of  the  patent  office,  and  the  solicitor  of  the  treasury,  shall 
constitute  a  board  to  hear  and  decideupon  the  evidence  produced  before  them 
for  and  against  the  extension;  and  the  patentee  is  required  to  furnish  to  the 
board  a  statement  in  writing,  under  oath,  of  the  ascertained  value  of  the  in- 
vention, and  of  his  receipts  and  expenditures,  sufficient  to  exhibit  a  true  and 
faithful  account  of  loss  and  profit  accruing  from  or  by  reason  of  the  said 
invention.  The  section  then  proceeds  to  declare,  that,  "If,  upon  a  hearing 
of  the  matter,  it  shall  appear  to  the  full  and  entire  satisfaction  of  the  board, 
having  due  regard  to  the  public  interest  therein,  that  it  is  just  and  proper 
that  the  term  of  the  patent  should  be  extended  by  reason  of  the  patentee, 
(not  the  assignee,)  without  neglect  or  fault  on  his  part,  having  failed  to  attain 
from  the  use  and  sale  of  his  invention  a  reasonable  remuneration  for  the 
time,  ingenuity,  and  expense  bestowed  upon  the  same,  and  the  introduction 
thereof  into  use,  it  shall  be  the  duty  of  the  commissioner  to  renew  and 
extend  the  patent,  by  making  a  certificate  thereon  of  such  extension,  from 
the  term  of  seven  years  from  and  after  the  expiration  of  the  first  term,  &c.  ; 
and,  therefore,  the  said  patent  shall  have  the  same  effect  in  law  as  though 
it  had  been  originally  granted  for  the  term  of  twenty-one  years."  Now, 
bearing  in  mind,  that,  at  this  time,  no  patent  could  by  law  issue  except 


108  LAW    OF     PATENTS. 

did  not  include  the  extension  by  an  administrator,  under  the  act 
of  1S36  ;  but  that  it  must  be  construed  to  include  only  renewals 

to  the  inventor,  and  that  it  was  only  by  the  subsequent  act  of  3d  of  March, 
1837,  oh.  45,  ^  6,  that  it  could  be  issued  to  the  assignee,  we  have  at  once  a 
perfect  key  to  the  true  object  and  purpose  of  this  18th  section  of  the  act  of 
1836,  that  the  word  "  patentee  "  is  used  therein,  as  equivalent  to  "  inventor," 
and  that  the  law  looked  to  him  as  the  sole  object  of  its  bounty,  and  meant 
to  reward  him  and  him  alone,  for  his  time,  ingenuity,  and  expense  in  perfect- 
ino-  his  invention.  Another  consideration  is  also  important  to  be  borne  in 
mind  ;  and  that  is,  that  the  18th  section  refers  solely  to  applications  to  be 
made  before  the  original  patent  has  expired.  Indeed,  the  very  proviso  to  the 
section  contemplated  that  the  application  not  only  may  be,  but  must  be  made 
while  the  term  of  the  original  patent  is  yet  running,  and  before  it  has  ex- 
pired ;  for  it  expressly  declares  "that  no  extension  of  a  patent  shall  be 
granted  after  the  expiration  of  the  term  for  which  it  was  originally  issued." 
Now,  keeping  this  in  view,  we  see  at  once  the  object  of  the  clause  of  the 
same  section  immediately  preceding  the  proviso.  It  is  in  these  words  : 
"  And  the  benefit  of  such  renewal  shall  extend  to  assignees  and  grantees  of 
the  right  to  use  the  thing  patented  to  the  extent  of  their  respective  interest 
therein.  The  clause  does  not  mean  to  enlarge  the  right  of  the  assignees  or 
grantees  to  use  the  thing  patented  beyond  the  extent  of  the  interest  originally 
granted  to  them.  If  that  interest  was,  from  its  nature  or  character,  or  just 
interpretation,  limited  to  the  original  term,  for  which  the  inventor  held  the 
patent,  then  the  assignees  and  grantees  were  to  have  no  benefit  ultra  in 
the  renewed  patent.  But  if  the  original  assignment  or  grant  had  ex- 
pressed in  terms,  or  by  just  implication  conferred  on  the  assignees  or  grantees 
a  right  or  interest  in  the  renewed  patent,  then  that  interest  was  to  be  pro- 
tected ;  for  it  was  a  possibility,  for  the  benefit  of  which  the  assignees  or 
grantees  had  originally  stipulated,  and  for  which  they  must  be  presumed  to 
have  paid  a  valuable  consideration.  In  this  view  of  the  matter,  there  would 
be  good  sense  in  the  clause,  founded  upon  the  actual  intentions  of  the  parties 
to  the  original  assignment  or  grant,  upon  a  just  interpretation  of  the  lan- 
guage used  by  them.  But  what  is  the  consequence  of  adopting  a  different 
interpretation  of  the  clause,  and  applying  it  indiscriminately  to  all  cases  of 
grants  and  assignments  of  and  under  the  original  patent,  where  no  such 
auxiliary  intentions  can  be  deduced  from  the  language  of  the  assignment  of 
grant?  Let  us  suppose  the  case,  where  an  assignment  has  been  made  by 
the  inventor  of  his  whole  patent  right  under  his  patent  for  a  small,  and 
(comparatively  speaking)  an  utterly  inadequate  compensation,  considering 
its  real  value,  and  this  has  been  forced  upon  him  by  embarrassment,  or 
poverty,  or  public  indifference,  or  his  own  mistaken  estimate  of  its  value 
(a  case  by  no  means  uncommon  in  the  history  of  inventors)  could  it  be  for  a 


EXTENSION  OF  PATENTS.  109 

obtained  upon  the  surrender  of  a  patent  on  account  of  a  defect- 
ive specification.^ 

moment  imagined,  that  the  18th  section  intended,  contrary  to  its  professed 
object,  to  benefit,  not  the  inventor  hinnself,  but  his  assignee  1  That  the  lat- 
ter and  not  the  former  was  to  receive  the  whole  profits  accruing  from  the 
renewed  patent  1  Or  that,  in  such  a  case,  the  inventor  would  not  be  entitled 
to  take  out  a  renewed  or  extended  patent  1  And  yet,  if  the  argument  be 
worth  anything,  the  18th  section  applies  as  fully  to  such  a  case  as  it 
would  apply  to  any  case  ;  and  ,we  cannot  except  it  from  the  pressure 
of  the  section,  unless  we  look  broadly  into  the  objects,  which  it  pur- 
ports to  accomplish,  and  limit  the  language  to  cases,  where  the  inventor  has 
intended  to  part  not  merely  with  all  his  present  rights,  but  prospectively 
with  all  the  future  rights  and  possibilities  which  he  might  acquire  by  a 
renewed  or  prolonged  patent.  Now,  the  words  of  the  clause  extend  to 
the  assignees  and  grantees  of  the  right,  (that  is,  of  the  patent  right,)  the 
benefit  of  the  renewal  "  io  the  extent  of  their  respective  interest  therein;" 
that  is,  of  the  patent  right,  and  no  more.  Now,  what  is  the  extent  of  their 
interest  therein  1  Clearly,  upon  the  principles  of  the  common  law,  neither 
more  nor  less  than  the  assignor  or  grantor  then  possessed,  and  was  capable 
of  assigning  or  granting  at  the  time  of  the  assignment  or  grant,  for  to  that 
the  language  of  the  grant  or  assignment  must,  in  reason  and  good  sense,  be 
limited,  unless  the  grantor  or  assignor  has  by  express  words  or  necessary 
implication  shown  a  broader  intention,  an  intention  not  merely  to  grant  or 
assign  the  right,  which  he  now  possesses,  but  the  possibilities,  which  he  may 
hereafter  acquire.  And  these  are  the  best  grounds  to  support  such  a  limita- 
tion and  interpretation  of  the  grant  or  assignment. 

In  the  first  place,  the  grantor  or  assignor  cannot  be  presumed  to  have 
received  any  compensation  or  consideration  except  for  the  very  thing,  and  to 
the  very  extent  which  the  language  properly  indicates.  In  the  next  place, 
no  court  is  at  liberty  to  add  to  the  terms  used  any  meaning  beyond  their 
ordinary  import,  unless  there  are  some  supplementary  expressions  to  justify 
such  a  construction.  In  the  present  case,  there  is  no  ground  to  suppose,  that 
either  party  contemplated,  that  the  grant  or  assignment,  or  license  was  to  be 
prolonged  beyond  the  term  of  the  original  patent,  and  there  are  no  words 
requiring  a  more  expanded  interpretation.  In  the  next  place,  to  give  such 
an  expanded  interpretation,  for  which  the  inventor  has  received  no  consider- 
ation, would  be  to  transfer  the  bounty  intended  by  the  government  for  the 
benefit  of  the  inventor,  whose  genius  had  brought  it  out,  and  brought  it  to 
perfection,  and  who  had  not  received  a  reasonable  remuneration  therefor,  to 
the  grantee  or  assignee,  who  had  paid  nothing  and  done  nothing  to  deserve 
it,  but  had  simply  given  the  quid  pro  quo  to  the  extent  of  the  right  or  interest 

'  Ibid. 

10 


no  LAW     OF      PATENTS. 

conferred  upon  him  under  the  existing  patent.  The  inventor  may,  from 
necessity  or  expediency,  or  otherwise,  (as  has  been  already  suggested,)  have 
conveyed  his  whole  right  and  interest  under  the  original  patent,  for  a  sum 
utterly  unworthy  of  its  intrinsic  value.  The  grantee  or  assignee  may  have 
grown  rich  by  the  success  of  the  inventor,  and  the  inventor  himself  may  be 
now  languishing  in  poverty.  Can  it  be,  that  the  section,  professing  to  intend 
a  remuneration  and  bounty  to  the  inventor,  should,  at  the  same  time,  have 
intended  to  sweep  from  him  the  future  profits  of  the  renewed  invention. 
That  if  he  should  have  parted  with  the  half  or  two-thirds,  or  the  whole  of  his 
rights  and  interests,  under  the  original  patent,  he  shall  be  narrowed  down  to 
a  corresponding  part,  or  excluded  from  all  the  profits  of  the  renewed  patent  ? 
If  so,  it  would  be  but  another  sad  illustration  of  the  fate  of  genius.  Sic  vos 
non  vobis.  Besides;  we  are  to  recollect,  that  this  section  of  the  act  of  1836, 
is  not  limited  to  cases  of  future  patents,  or  to  future  grants  or  assignments 
thereof;  but  it  applies  to  past  also  ;  and  that  the  language,  if  applicable  at 
all,  reaches  to  both  classes,  the  past  as  well  as  the  future  ;  and  the  present 
case  is  one  of  the  prolongation  of  a  patent  issued  long  before  the  act  of  1836. 
So  that  the  section  is  thus  made  to  apply  to  a  case,  where  neither  party  could 
have  contemplated  any  right  of  renewal,  or  any  possibility  of  a  future  interest 
therein.  The  patentee  had  no  right  of  renewal  either  in  esse  or  m  posse. 
The  whole  vested  in  the  exercise  of  a  sound  discretion  by  Congress,  which 
it  would  or  might  apply  singly  to  the  merits  of  each  particular  case,  as  it 
should  be  presented  to  them  for  consideration. 

Now,  if  we  construe  the  language  of  this  clause  with  reference  to  the 
scope  of  the  antecedent  language,  and  the  professed  objects  of  the  section, 
however  loose  and  general  it  may,  at  first  view,  seem  to  be,  it  admits  of  an 
easy  and  satisfactory  exposition.  The  right  of  assignees  and  grantees  to 
use  the  thing  patented,  and  to  have  the  benefit  of  the  renewal,  is  to  be  to  the 
extent  of  their  respective  interests  therein,  and  no  more.  If  that  interest 
was  short  of  the  whole  of  the  original  term,  for  which  the  patent  was  origi- 
nally issued,  it  is  not  to  reach  the  renewed  term.  If  it  was  limited  to  the 
extent  of  the  original  term,  it  is  still  to  be  bounded  by  it.  But  if  it  is  an 
interest  in  terms,  designed  to  be  coextensive  with  all  the  interest,  which  the 
patentee  now  has,  or  may  hereafter  acquire,  not  merely  to  his  present  rights 
in  esse,  but  with  his  contingent  rights  in  posse,  then  the  section  makes  that  a 
legal  interest,  which,  otherwise,  would  be  but  a  mere  potential,  equitable 
mterest,  to  be  enforced  in  equity,  as  a  mere  right  under  contract,  and  not  as 
a  fixed,  present,  vested  interest.  In  this  way,  the  whole  structure  of  the 
section  becomes  harmonious  with  its  professed  objects,  the  benefit  and  remu- 
neration of  the  inventor,  and  it  saves  only  those  rights  in  the  renewed  patent 
for  which  the  inventor  has  already  secured  a  compensation,  and  to  which  he 
has  voluntarily  extended  his  original  grants  and  assignments,  and  licenses, 
to  the  very  terms  and  intents  thereof.  Interpret  the  section  in  any  other 
manner,  and  it  speaks  an  intention  in  one  part,  which  it  contradicts  or  con- 


EXTENSION  OF  PATENTS.  Ill 

trols  in  another.  It  takes  from  the  inventor,  what  he  never  intended  to  part 
with,  and  may  deprive  him  in  part,  or  in  the  whole,  according  to  circum- 
stances, of  the  reward,  which  the  section  seemed  so  studiously  to  hold  out  to 
encourage  his  genius  and  skill,  and  to  reimburse  his  expenditures. 

These  are  some  of  the  reasons  which  have  influenced  my  mind  in  arriving 
at  the  conclusion  which  I  have  before  stated.  If  they  are  erroneous,  it  will 
belong  to  the  Supreme  Court  to  correct  the  errors,  and  to  adopt  a  rule, 
which  adhering  to  a  literal  interpretation  of  the  clause,  may,  at  the  same 
time,  deprive  the  inventor  of  all  motives  to  renew  the  patent,  or  make  the 
renewal  worthless  to  him,  and  injurious  to  the  public." 

Subsequently  the  Supreme  Court  of  the  United  States,  (McLean,  Wayne, 
and  Woodbury,  Justices,  dissenting,)  in  Wilson  v.  Rousseau,  4  Howard's 
R.  646,  decided  the  point  as  stated  in  the  text.  Mr.  Justice  Nelson  delivered 
the  opinion  of  the  Court  as  follows  :  "  The  second  question  is,  whether,  by 
force  and  operation  of  the  eighteenth  section  already  referred  to,  the  exten- 
sion granted  to  W.  W.  VVoodworth,  as  administrator,  on  the  16th  day  of 
November,  1842,  inured  to  the  benefit  of  assignees  under  the  original  patent 
granted  to  William  Woodworth,  on  the  27th  day  of  December,  1828,  or 
whether  said  extension  inured  to  the  benefit  of  the  administrator  only,  in  his 
said  capacity.  The  mosi  of  this  section  has  already  been  recited  in  the  con- 
sideration of  the  first  question,  and  it  will  be  unnecessary  to  repeat  it.  It 
provides  for  the  application  of  the  patentee  to  the  commission  for  an  exten- 
sion of  the  patent  for  seven  years  ;  constitutes  a  board  to  hear  and  decide 
upon  the  application  ;  and  if  his  receipts  and  expenditures,  showing  the  loss 
and  profits  accruing  to  him  from  and  on  account  of  his  invention,  shall  estab- 
lish to  the  satisfaction  of  the  board,  that  the  patent  should  be  extended  by 
reason  of  the  patentee,  without  any  fault  on  his  part,  having  failed  to  obtain 
from  the  use  and  sale  of  his  invention  a  reasonable  remuneration  for  his  time, 
ingenuity,  and  expense  bestowed  upon  the  same,  and  the  introduction  of  it 
into  use,  it  shall  be  the  duty  of  the  commissioners  to  extend  the  same  by 
making  a  certificate  thereon  of  such  extension  for  the  term  of  seven  years 
from  and  after  the  first  term ;  '  and  thereupon  the  said  patent  shall  have  the 
same  effect  in  law  as  though  it  had  been  originally  granted  for  the  term  of 
twenty-one  years.  And  then  comes  the  clause  in  question:  —  '■'■  And  the 
benefit  of  such  renewal  shall  extend  to  assignees  and  grantees  of  the  right  to  use 
the  thing  patented,  to  the  extent  of  their  respective  interests  therein.''''  ' 

The  answer  to  the  second  question  certified  depends  upon  the  true  con- 
struction of  the  above  clause  respecting  the  rights  of  assignees  and  grantees. 

Various  and  conflicting  interpretations  have  been  given  to  it  by  the  learned 
counsel,  on  the  argument,  leading  to  different  and  opposite  results,  which  it 
will  be  necessary  to  examine.  On  one  side,  it  has  been  strongly  argued, 
that  the  legal  operation  and  effect  of  the  clause  save  and  protect  all  the  rights 
and  interests  of  assignees  and  grantees  in  the  patent  existing  at  the  time  of 
the  extension  ;    and  thus  secure  and  continue  the  exclusive  use  and  enjoy- 


112  LAW     OF     PATENTS. 

luent  of  these  rights  and  interests  for  the  seven  years,  to  the  same  extent, 
and  in  as  ample  a  manner,  as  held  and  enjoyed  under  the  first  term.  That 
if  A.  holds  an  assignment  of  a  moiety  of  the  patent,  he  will  hold  the  same 
for  the  new  term  of  seven  years  ;  if  of  the  whole  patent,  then  the  whole 
interest  for  that  period.  And  that  as  soon  as  the  new  grant  is  made  to  the 
patentee,  the  interest  therein  passes,  by  operation  of  this  clause,  to  the 
assft^nees  of  the  old  term  in  proportion  to  their  respective  shares.  On  the 
other  side,  it  has  been  argued,  with  equal  earnestness,  that,  according  to  the 
true  construction  and  legal  effect  of  the  clause,  protection  is  given,  and 
intended  to  he  given,  only  to  the  rights  and  interests  of  assignees  and  grant- 
ees acquired  and  held  by  assignments  and  grants  from  the  patentee  in  and 
under  the  second  or  new  term  ;  and  that  it  does  not  refer  to,  or  embrace,  or 
in  any  way  affect  the  rights  and  interests  of  assignees  or  grantees  holding 
under  the  old.  In  connection  with  this  view,  it  is  said  that  the  rights  thus 
protected  in  the  new  term  may  be  acquired  by  means  of  the  legal  operation 
of  the  clause,  either  from  a  direct  assignment  or  grant  after  the  extension  of 
the  patent,  or  by  an  appropriate  provision  for  that  purpose,  looking  to  an 
extension,  contained  in  the  assignment  or  grant  under  the  old.  It  is  not  to 
be  denied,  but  that,  upon  any  view  that  has  been  taken,  or  that  may  be 
taken  of  the  clause,  its  true  meaning  and  legal  effect  cannot  be  asserted  with 
entire  confidence  ;  and,  after  all,  must  depend  upon  such  construction  as  the 
Court  can  best  give  to  doubtful  phraseology  and  obscure  legislation,  having 
a  due  regard  to  the  great  object  and  intent  of  Congress,  as  collected  from 
the  context  and  general  provisions  and  policy  of  the  patent  law.  The  rule  is 
familiar  and  well  settled,  that,  in  case  of  obscure  and  doubtful  words  or 
phraseology,  the  intention  of  the  law-makers  is  to  be  resorted  to,  if  discover- 
able from  the  context,  in  order  to  fix  and  control  their  meaning  so  as  to 
reconcile  it,  if  possible,  with  the  general  policy  of  the  law. 

Now  the  serious  difficulty  in  the  way,  and  which  renders  the  first  inter- 
pretation inadmissible,  except  upon  the  most  explicit  and  positive  words,  is, 
that  it  subverts  at  once  the  whole  object  and  purpose  of  the  enactment,  as  is 
plainly  written  in  every  line  of  the  previous  part  of  the  section.  It  gives  to 
the  assignees  and  grantees  of  the  patent,  as  far  as  assigned  under  the  old 
term,  the  exclusive  right  and  enjoyment  of  the  invention  —  the  monopoly  — 
in  the  extended  term  for  the  seven  years  ;  when,  by  the  same  provision,  it 
clearly  appears  that  it  was  intended  to  be  secured  to  the  patentee  as  an  addi- 
tional remuneration  for  his  time,  ingenuity  and  expense  in  bringing  out  the 
discovery,  and  in  introducing  it  into  public  use.  It  gives  this  remuneration 
to  parties  that  have  no  peculiar  claims  upon  the  government  or  the  public, 
and  lakes  it  from  those  who  confessedly  have. 

The  whole  structure  of  the  eighteenth  section  turns  upon  the  idea  of 
affording  this  additional  protection  and  compensation  to  the  patentee,  and  to 
the  patentee  alone,  and  hence  the  reason  for  instituting  the  inquiry  before  the 
grant  of  the  extension,  to  ascertain  whether  or  not  he  has  failed  to  realize  a 


EXTENSION  OF  PATENTS.  113 

reasonable  remuneration  from  the  sale  and  use  of  the  discovery, — the  pro- 
duction of  an  account  of  profit  and  loss  to  enabTe  the  board  to  determine  the 
question  ;  and  as  it  comes  to  the  one  or  the  other  conclusion,  to  grant  the 
extended  term  or  not. 

It  is  obvious,  therefore,  that  Congress  had  not  at  all  in  viev?  protection  to 
assignees.  That  their  condition,  on  account  of  dealing  in  the  subject  of  the 
invention,  whether  successful  or  otherwise,  was  not  in  the  mind  of  that 
body,  nor  can  any  good  reason  be  given  why  it  should  have  been.  They 
had  purchased  portions  of  the  interest  in  the  invention,  and  dealt  with  the 
patent-rights  as  a  matter  of  business  and  speculation  ;  and  stood  in  no  differ- 
ent relation  to  the  government  or  the  public,  than  other  citizens  engaged  in 
the  common  affairs  of  life.  Nothing  short  of  the  most  fixed  and  positive 
terms  of  a  statute  could  justify  an  interpretation  so  repugnant  to  the  whole 
scope  and  policy  of  it,  and  to  wise  and  judicious  legislation.  We  think  this 
construction  not  necessarily  required  by  the  language  of  the  clause,  and  is 
altogether  inadmissible. 

Then,  as  to  the  second  interpretation,  namely,  that  the  clause  refers  to, 
and  includes,  assignees  and  grantees  of  interests  acquired  in  the  new  term, 
either  by  an  assignment  or  grant  from  the  patentee  after  the  extension,  or 
by  virtue  of  a  proper  clause  for  that  purpose,  in  the  assignment  under  the 
old  term.  The  difficulty  attending  this  construction  lies  in  the  uselessness 
of  the  clause  upon  the  hypothesis,  —  the  failure  to  discover  any  subject-mat- 
ter, upon  which  to  give  reasonable  operation  and  effect  to  it,  —  and  hence,  to 
adopt  the  construction  is  to  make  the  clause  virtually  a  dead  letter,  the 
grounds  for  which  conclusion  we  will  proceed  to  state.  The  eleventh  sec- 
tion of  the  Patent  Act  provides,  that  every  patent  shall  be  assignable,  in 
law,  either  as  to  the  whole  interest,  or  any  undivided  part  thereof,  by  an 
instrument  in  writing ;  which  assignment,  and  also  any  grant  and  convey- 
ance of  the  exclusive  right  under  any  patent,  &c.,  shall  be  recorded  in 
the  patent  office.  And  the  fourteenth  section  authorizes  suits  to  be  brought 
in  the  name  of  the  assignee  or  grantee,  for  an  infringement  of  his  rights,  in 
a  court  of  law. 

One  object  of  these  provisions  found  in  the  general  patent  system  is,  to 
separate  the  interest  of  the  assignee  or  grantee  from  that  which  may  be 
held  by  the  patentee,  and  to  make  each  fractional  interest  held  under  the 
patent  distinct  and  separate  ;  in  other  words,  to  change  a  mere  equitable 
into  a  legal  title  and  interest,  so  that  it  may  be  dealt  with  in  a  court 
of  law. 

Now,  in  view  of  these  provisions,  it  is  difiicult  to  perceive  the  materiality 
of  the  clause  in  question,  as  it  respects  the  rights  of  assignees  and  grantees 
held  by  an  assignment  or  grant  in  and  under  the  new  term,  any  more  than 
in  respect  to  like  rights  and  interests  in  and  under  the  old.  The  eleventh 
and  fourteenth  sections  embrace  every  assignment  or  grant  of  a  part  or  the 
whole  of  the  interest  in  the  invention,  and  enable  these  parties  to  deal  with 
10* 


114  LAW    OF    PATENTS. 

it,  in  all  respects,  the  same  as  the  patentee.  They  stand  upon  the  same 
footing,  under  the  new  term,  as  in  the  case  of  former  assignments  under  the 
old.  Nothing  can  be  clearer.  It  is  impossible  to  satisfy  the  clause  by 
referring  it  to  these  assignments  and  grants  ;  or  to  see  how  Congress  could, 
for  a  moment,  have  innagined  that  there  would  be  any  necessity  for  the 
clause,  in  this  aspect  of  it.  It  would  have  been  as  clear  a  work  of  superero- 
gation as  can  be  stated. 

The  only  color  for  the  argument  in  favor  of  the  necessity  of  this  clause, 
in  the  aspect  in  which  we  are  viewing  it,  is,  as  respects  the  contingent 
interest  in  the  new  term,  derived  from  a  provision  in  an  assignment  under 
the  old  one,  looking  to  the  extension.  As  the  right  necessarily  rested  on 
contract,  at  least  till  the  contingency  occurred,  there  may  be  some  doubt 
whether,  even  after  its  occurrence,  the  eleventh  and  fourteenth  sections  had 
the  effect  to  change  it  into  a  vested  legal  interest,  so  that  it  could  be  dealt 
with  at  law;  and  that  a  new  assignment  or  grant  from  the  patentee  would 
be  required,  which  could  be  enforced  only  in  a  court  of  equity.  To  this  ex- 
tent there  may  be  some  color  for  the  argument,  —  some  supposed  matter  to 
give  operation  and  effect  to  the  clause. 

But  what  is  the  amount  of  iti  Not  that  the  clause  creates  or  secures 
this  contingent  interest  in  the  new  term,  for  that  depends  upon  the  contract 
between  the  parties,  and  the  contract  alone,  and  which,  even  if  the  general 
provisions  of  the  law  respecting  the  rights  of  assignees  and  grantees  could 
not  have  the  effect  to  change  into  a  legal  right,  might  be  enforced  in  a  court 
of  equity.  The  only  effect,  therefore,  of  the  provision  in  respect  to  assign- 
ees and  grantees  of  this  description  would  be,  to  change  the  nature  of  the 
contingent  interest  after  the  event  happened,  from  a  right  resting  in  contract 
to  a  vested  legal  right ;  or,  to  speak  with  more  precision,  to  remove  a  doubt 
about  the  nature  of  the  interest  in  the  new  term,  after  the  happening  of  a 
certain  contingency,  which  event  in  itself  was  quite  remote.  This  seems  to 
be  the  whole  amount  of  the  effect  that  even  ingenious  and  able  counsel  have 
succeeded  in  finding,  to  satisfy  the  clause.  It  presupposes  that  Congress 
looked  to  this  scintilla  of  interest  in  the  new  term,  which  might  or  might 
not  occur,  and  cast  about  to  provide  for  it,  for  fear  of  doubts  as  to  its  true 
nature  and  legal  character,  and  the  effect  of  the  general  system  upon  it. 
We  cannot  but  think  a  court  should  hesitate  before  giving  a  construction 
to  the  clause  so  deeply  harsh  and  unjust  in  its  consequences,  both  as  it 
respects  the  public  and  individual  rights  and  interests,  upon  so  narrow  a 
foundation. 

But  there  are  other  difficulties  in  the  way  of  this  construction.  The 
eleventh  section,  regulating  the  rights  of  assignees  and  grantees,  provides 
"  that  every  patent  shall  be  assignable  at  law,"  &c.  "  which  assignment, 
and  also  every  grant  and  conveyance  of  the  exclusive  right  under  any  patent 
to  make  and  use,  and  to  grant  to  others  to  make  and  use,  the  thing  patented 
within  and  throughout  any  specified  part  or  portion  of  the  United  States,"  'm\ 

&c.  "  shall  be  recorded."  I 


EXTENSION  OF  PATENTS.  115 

Now  it  will  be  apparent,  we  think,  from  a  very  slight  exarainaiion  of  the 
clause  in  question,  that  it  does  not  embrace  assignees  or  grantees,  in  the 
sense  of  the  eleventh  section,  at  all  ;  nor  in  the  sense  in  which  they  are 
referred  to  when  speaking  of  these  interests  generally  under  the  patent  law, 
without  interpolating  words  or  giving  a  very  forced  construction  to  those 
composing  it.  The  clause  is  as  follows  :  "  And  the  benefit  of  such  renewal 
shall  extend  to  assignees  and  grantees  of  the  right  to  use  the  thing  patented, 
to  the  extent  of  their  respective  interests  therein." 

It  will  be  seen  that  the  word  "  exclusive,"  used  to  qualify  the  right  of  a 
grantee  in  the  eleventh  section,  and  indeed,  always  when  referred  to  in  the 
patent  law,  (^  14,)  and  also  the  words  "to  make,"  and  to  grant  to  others 
"  to  make  and  use,"  are  dropped,  so  that  there  is  not  only  no  exclusive 
right  in  the  grantee,  in  terms,  granted  or  secured  by  the  clause,  but  no  right 
at  all,  —  no  right  whatever, — to  make  or  to  grant  to  others  to  make  and 
use  the  thing  patented  ;  in  other  words,  no  exclusive  right  to  make  or  vend. 
And  it  is,  we  think,  quite  obvious,  from  the  connection  and  phraseology,  that 
assignees  and  grantees  are  placed,  and  were  intended  to  be  placed,  in  this 
respect,  upon  the  same  footing.  We  should  scarcely  be  justified  in  giving 
to  this  term  a  more  enlarged  meaning  as  to  the  right  to  make  and  sell,  as  it 
respects  the  one  class,  than  is  given  to  the  others,  as  they  are  always  used 
as  correlative  in  the  patent  laws,  to  the  extent  of  the  interests  held  by  them. 
The  clause,  therefore,  in  terms,  seems  to  limit  studiously  the  benefit,  or 
reservation,  or  whatever  it  may  be  called,  under  or  from  the  new  grant  to  the 
naked  right  to  use  the  thing  patented  ;  not  an  exclusive  right,  even  for  that, 
which  might  denote  monopoly,  nor  any  right  at  all,  much  less  exclusive,  to 
make  and  vend.  This  seems  to  have  been  guardedly  omitted.  We  do  not 
forget  the  remaining  part  of  the  sentence,  "  to  the  extent  of  their  respective 
interests  therein,"  which  is  relied  on  to  help  out  the  difficulty.  But  we  see 
nothing  in  the  phrase,  giving  full  effect  to  it,  necessarily  inconsistent  with 
the  plain  meaning  of  the  previous  words.  The  exact  idea  intended  to  be 
expressed  may  be  open  to  observation  ;  but  we  think  it  far  from  justifying 
the  court  in  holding,  that  the  grant  or  reservation  of  a  right  to  use  a  thing 
patented,  well  known  and  in  general  use  at  the  time,  means  an  exclusive 
right  to  make  and  use  it ;  and  not  only  this,  but  an  exclusive  right  to  grant 
to  others  the  right  to  make  and  use  it,  meaning  an  exclusive  right  to 
vend  it. 

The  Court  is  asked  to  build  up  a  complete  monopoly  in  the  hands  of 
assignees  and  grantees  in  the  thing  patented,  by  judicial  construction,  found- 
ed upon  the  grant  of  a  simple  right  to  use  it  to  the  extent  of  the  interest 
possessed  ;  for  the  argument  comes  to  this  complexion.  A  simple  right  to 
use  is  given,  and  we  are  asked  to  read  it  an  exclusive  right,  and  not  only  to 
read  it  an  exclusive  right  to  use,  but  an  exclusive  right  to  make  and  vend 
the  patented  article. 

Recurring  to  the  patent  law,  it  will  be  seen  that  Congress,  in  granting 


116  LAW     OF     PATENTS. 

monopolies  of  this  description,  have  deemed  it  necessary  to  use  very  different 
language.  The  grant  in  the  patent  must  be  in  express  terms,  for  "  the  full 
and^exclusive  right  and  liberty  of  making,  using,  and  vending,"  in  order  to 
confer  exclusive  privileges.  The  same  language  is  also  used  in  the  act 
when  speaking  of  portions  of  the  monopoly  in  the  hands  of  assignees  and 
giantees.     (^^  11,  14.) 

We  cannot  but  think,  therefore,  if  Congress  had  intended  to  confer  a 
monopoly  in  the  patented  article  upon  the  assignees  and  grantees,  by  the 
clause  in  question,  the  usual  formula  in  all  such  grants  would  have  been 
observed,  and  that  we  should  be  defeating  their  understanding  and  intent, 
as  well  as  doing  violence  to  the  language,  to  sanction  or  uphold  rights  and 
privileges  of  such  magnitude  by  the  mere  force  of  judicial  construction.  We 
conclude,  therefore,  that  the  clause  has  no  reference  to  the  right  or  interest 
of  assignees  and  grantees  under  the  new  and  extended  term,  upon  the 
ground, — 

1.  Because,  in  that  view,  giving  to  the  words  the  widest  construction, 
there  is  nothing  to  satisfy  the  clause,  or  upon  which  any  substantial  effect 
and  operation  can  be  given  to  it ;  it  becomes  virtually  a  dead  letter,  and  work 
of  legislative  superfluity  ;  and 

2.  Because  the  clause  in  question,  upon  a  true  and  reasonable  interpreta- 
tion, does  not  operate  to  vest  the  assignees  and  grantees  named  therein  with 
any  exclusive  privileges  whatever,  in  the  extended  term,  and  therefore  can- 
not be  construed  as  relating  to  or  embracing  such  interests  in  the  sense  of 
the  law. 

The  extension  of  the  patent  under  the  eighteenth  section  is  a  new  grant  of 
the  exclusive  right  or  monopoly  in  the  subject  of  the  invention  for  the  seven 
years.  All  the  rights  of  assignees  or  grantees,  whether  in  a  share  of  the 
patent,  or  to  a  specified  portion  of  the  territory  held  under  it,  terminate  at 
the  end  of  the  fourteen  years,  and  become  reinvested  in  the  patentee  by  the 
new  grant.  From  that  dale  he  is  again  possessed  of  "  the  full  and  exclusive 
right  and  liberty  of  making,  using  and  vending  to  others  the  invention," 
whatever  it  may  be.  Not  only  portions  of  the  monopoly  held  by  assignees 
and  grantees,  as  subjects  of  trade  and  commerce,  but  the  patented  articles  or 
machines  throughout  the  country,  purchased  for  practical  use  in  the  busi- 
ness affairs  oflife,  are  embraced  within  the  operation  of  the  extension.  This 
latter  class  of  assignees  and  grantees  are  reached  by  the  new  grant  of  the 
exclusive  right  to  use  the  thing  patented.  Purchasers  of  the  machines,  and 
who  were  in  the  use  of  them  at  the  time,  are  disabled  from  further  use 
immediately,  as  that  right  became  vested  exclusively  in  the  patentee. 
Making  and  vending  the  invention  are  prohibited  by  the  coiTesponding  terms 
of  his  grant. 

Now,  if  we  read  the  clause  in  question  with  reference  to  this  state  of 
things,  we  think  that  much  of  the  difficulty  attending  it  will  disappear.  By 
the  previous  part  of  the  section,  the  patentee  would  become  reinvested  with 


EXTENSION  OF  PATENTS.  117 

the  exclusive  right  to  make,  use,  and  vend  the  thing  patented  ;  and  the 
clause  in  question  fallows,  and  was  so  intended  as  a  quaUfication.  To  what 
extent,  is  the  question.  The  language  is,  "  And  the  benefit  of  such 
renewal  shall  extend  to  assignees  and  grantees  of  the  right  to  use  the  thing 
patented,  to  the  extent  of  their  respective  interests  therein,"  naturally,  we 
think,  pointing  to  those  who  were  in  the  use  of  the  patented  article  at  the 
time  of  the  renewal,  and  intended  to  restore  or  save  to  them  that  right 
which,  without  the  clause,  would  have  been  vested  again  exclusively  in  the 
patentee.  The  previous  part  of  the  section  operating  in  terms  to  vest  him 
with  the  exclusive  right  to  use,  as  well  as  to  make  and  vend,  there  is  nothing 
very  remarkable  in  the  words,  the  legislature  intending  thereby  to  qualify 
the  right  in  respect  to  a  certain  class  only,  leaving  the  right  as  to  all  others 
in  the  patentee,  in  speaking  of  the  benefit  of  the  renewal  extending  to  this 
class.  The  renewal  vested  him  with  the  whole  right  to  use,  and  therefore 
there  is  no  great  impropriety  of  language,  if  intended  to  protect  this  class,  by 
giving  them,  in  terms,  the  benefit  of  the  renev.'al.  Against  this  view  it  may 
be  said  that  "  the  thing  patented  "  means  the  invention  or  discovery,  as  held 
in  McClurg  v.  Kingsland,  1  How.  202,  and  that  the  right  to  use  "the  thing 
patented  "  is  what,  in  terms,  is  provided  for  in  the  clause.  That  is  admitted, 
but  the  words,  as  used  in  the  connection  here  found,  with  the  right  simply 
to  use  the  thing  patented,  not  the  exclusive  right,  which  would  be  a  mo- 
nopoly, necessarily  refer  to  the  patented  machine,  and  not  to  the  invention  ; 
and,  indeed,  it  is  in  that  sense  that  the  expression  is  to  be  understood  gen- 
erally throughout  the  patent  law,  when  taken  in  connection  with  the  right  to 
use,  in  contradistinction  to  the  right  to  make  and  sell. 

The  "thing  patented  "  is  the  invention  ;  so  the  machine  is  the  thing  pa- 
tented, and  to  use  the  machine  is  to  use  the  invention,  because  it  is  the  thing 
invented,  and  in  respect  to  which  the  exclusive  right  is  secured,  as  is  also 
held  in  M'Clurg  v.  Kingsland.  The  patented  machine  is  frequently  used  as 
equivalent  for  the  "  thing  patented,"  as  well  as  for  the  invention  or  discovery, 
and  no  doubt,  when  found  in  connection  with  the  exclusive  right  to  make 
and  vend,  always  means  the  right  of  property  in  the  invention,  the  monopoly. 
But  when  in  connection  with  the  simple  right  to  use,  the  exclusive  right  to 
make  and  vend  being  in  another,  the  right  to  use  the  thing  patented  neces- 
sarily results  in  a  right  to  use  the  machine,  and  nothing  more.  Then  as  to 
the  phrase  "  to  the  extent  of  their  respective  interests  therein,"  that  obvi- 
ously enough  refers  to  their  interests  in  the  thing  patented,  and  in  connection 
with  the  right  simply  to  use,  means  their  interests  in  the  patented  machines, 
be  their  interest  in  one  or  more  at  the  time  of  the  extension. 

This  view  of  the  clause,  which  brings  it  down  in  practical  effect  and  oper- 
ation to  the  persons  in  the  use  of  the  patented  machine  or  machines  at  the 
time  of  the  new  grant,  is  strengthened  by  the  clause  immediately  following, 
which  is,  "  that  no  extension  of  the  patent  shall  be  granted  after  the  expi- 
ration of  the  term  for  which  it  was  originally  issued."     What  is  the  object 


118  LAW    OF    PATENTS. 

of  this  provision?  Obviously  to  guard  against  the  injustice  which  might 
otherwise  occur  to  a  person  who  had  gone  to  the  expense  of  procuring  the 
patented  article,  or  changed  his  business  upon  the  faith  of  using  or  dealing 
with  it,  after  the  monopoly  had  expired,  which  would  be  arrested  by  the 
operation  of  the  new  grant.  To  avoid  this  consequence,  it  is  provided,  that 
the  extension  must  take  place  before  the  expiration  of  the  patent,  if  at  all. 
Now,  it  would  be  somewhat  remarkable,  if  Congress  should  have  been 
thus  careful  of  a  class  of  persons  who  had  merely  gone  to  the  expense  of 
providing  themselves  with  the  patented  article  for  use  or  as  a  matter  of  trade, 
after  the  monopoly  had  ceased,  and  would  be  disappointed  and  exposed  to 
loss  if  it  was  again  renewed,  and  at  the  same  time  had  overlooked  the  class, 
who,  in  addition  to  this  expense  and  change  of  business,  had  bought  the 
rio^ht  from  the  patentee,  and  were  in  the  use  and  enjoyment  of  the  machine, 
or  whatever  it  might  be,  at  the  time  of  the  renewal.  These  provisions  are 
in  juxtaposition,  and  we  think  are  but  parts  of  the  same  policy,  looking  to 
the  protection  of  individual  citizens  from  any  special  wrong  and  injustice  on 
account  of  the  operation  of  the  new  grant.  The  consequences  of  any  dif- 
ferent construction  from  the  one  proposed  to  be  given  are  always  to  be  re- 
garded by  courts,  when  dealing  with  a  statute  of  doubtful  meaning.  For 
between  two  different  interpretations,  resting  upon  judicial  expositions  of  am- 
biguous and  involved  phraseology,  that  which  will  result  in  what  may  be 
regarded  as  coming  nearest  to  the  intention  of  the  legislature  should  be 
preferred. 

We  must  remember,  too,  that  we  are  not  dealing  with  the  decision  of  the 
particular  case  before  us,  though  that  is  involved  in  the  inquiry;  but  with  a 
general  system  of  great  practical  interest  to  the  country  ;  and  it  is  the  effect 
of  our  decision  upon  the  operation  of  the  system  that  gives  to  it  its  chief 
importance. 

The  eighteenth  section  authorizes  the  renewal  of  patents  in  all  cases  where 
the  board  of  commissioners  is  satisfied  of  the  usefulness  of  the  invention, 
and  of  the  inadequacy  of  remuneration  to  the  patentee.  Inventions  of  merit 
only  are  the  subject  of  the  new  grant ;  such  as  have  had  the  public  confi- 
dence, and  which  it  may  be  presumed  have  entered  largely  in  one  way  and 
another  into  the  business  affairs  of  life. 

By  the  report  of  the  commissioners  of  patents  it  appears  that  five  hun- 
dred and  two  patents  were  issued  in  the  year  1814  ;  for  the  last  fourteen 
years,  the  average  issue  yearly  exceeded  this  number,  and  embrace  articles 
to  be  found  in  common  use  in  every  department  of  labor  and  art,  on  the 
farm,  in  the  workshop  and  factory.  These  articles  have  been  purchased  from 
the  patentee,  and  have  gone  into  common  use.  But  if  the  construction 
against  which  we  have  been  contending  should  prevail,  the  moment  the 
patent  of  either  article  is  renewed,  the  common  use  is  arrested,  by  the  ex- 
clusive grant  to  the  patentee.  It  is  true  the  owner  may  re-purchase  the 
right  to  use,  and,  doubtless,  would  be  compelled  from  necessity;  but  he  is 


EXTENSION    OF    PATENTS. 


119 


left  to  the  discretion  or  caprice  of  the  patentee.  A  construction  leading  to 
such  consequences,  and  fraught  with  such  unmixed  evil,  we  must  be  satisfied, 
was  never  contemplated  by  Congress,  and  should  not  be  adopted  unless  com- 
pelled by  the  most  express  and  positive  language  of  the  statute."  The  dis- 
senting opinion  of  Mr.  Justice  Woodbury  in  this  case  will  well  reward  an 
attentive  perusal. 


PART   II. 

PROCEEDINGIS   TO   OBTAIN,  RENEW, 

OR 

EXTEND  A  PATENT. 


11 


PART    II. 

PROCEEDINGS   TO   OBTAIN,  RENEW,   OR   EXTEND  A 

PATENT. 


CHAPTER    I. 


THE      SPECIFICATION. 


*§>  120.  Having  ascertained  the  kinds  of  subjects  for  which  let- 
ters-patent may  be  obtained,  and  the  parties  entitled  to  take, 
renew,  or  extend  them,  we  have  now  to  slate  the  proceedings 
requisite  to  the  issui-ng,  renewal,  and  extension  of  patents,  and 
the  principles  which  govern  their  construction.  As  the  first 
step  to  be  taken,  in  making  application  for  a  patent,  is  to  pre- 
pare a  written  description  of  the  invention  or  discovery,  the 
requisites  of  this  instrument,  called  the  specification,  and  the 
rules  for  its  construction,  will  first  engage  our  attention. 

^  1-21.  The  Act  of  Congress,  of  July  4th,  1836,  c.  357,  j^  6, 
contains  the  following  enactment. 

"  But  before  any  inventor  shall  receive  a  patent  for  any  such 
new  invention  or  discovery,  he  shall  deliver  a  written  descrip- 
tion of  his  invention  or  discovery,  and  of  the  manner  and  pro- 
cess of  making,  constructing,  using  and  compounding  the  same, 
in  such  full,  clear,  and  exact  terms,  avoiding  unnecessary  pro- 
lixity, as  to  enable  any  person  skilled  in  the  art  or  science  to 
which  it  appertains,  or  with  which  it  is  most  nearly  connected, 
to  make,  construct,  compound,  and  use  the  same  ;    and  in  case 


124  LAW     OF     PATENTS. 

of  any  machine,  he  shall  fully  explain  the  principle  and  the 
several  modes  in  which  he  has  contemplated  the  application  of 
t])at  principle  or  character  by  which  it  may  be  distinguished 
from  other  inventions ;  and  shall  particularly  specify  and  point 
out  the  part,  improvement,  or  combination,  which  he  claims  as 
his  own  invention  or  discovery.  He  shall,  furthermore,  accom- 
pany the  whole  with  a  drawing  or  drawings,  and  written  refer- 
ences, where  the  nature  of  the  case  admits  of  drawings,  or  with 
specimens  of  ingredients,  and  of  the  composition  of  matter,  suffi- 
cient in  quantity  for  the  purpose  of  experiment,  where  the  in- 
vention or  discovery  is  of  a  composition  of  matter  ;  which 
descriptions  and  drawings,  signed  by  the  inventor  and  attested 
by  two  witnesses,  shall  be  filed  in  the  patent  office ;  and  he 
shall,  moreover,  furnish  a  model  of  his  invention,  in  all  cases 
which  admit  of  a  representation  by  model,  of  a  convenient  size 
to  exhibit  advantageously  its  several  parts."  ^ 

'  The  Act  of  1793,  c.  55,  ^  3,  sets  forth  the  requisites  of  a  specification, 
as  follows  :  "  And  be  it  further  enacted,  that  every  inventor,  before  he  can 
receive  a  patent,  shall  svvear  or  affirm,  that  he  does  verily  believe,  that  he  is 
the  true  inventor  or  discoverer  of  the  art,  machine,  or  improvement,  for 
ivhich  he  solicits  a  patent ;  which  oath  or  affirmation  may  be  made  before 
any  person  authorized  to  administer  oaths,  and  shall  deliver  a  written  de- 
scription of  his  invention,  and  of  the  manner  of  using,  or  process  of  com- 
pounding the  same,  in  such  full,  clear  and  exact  terras,  as  to  distinguish  the 
same  from  all  other  things  before  known,  and  to  enable  any  person  skilled 
in  the  art  or  science,  of  which  it  is  a  branch,  or  with  which  it  is  most  nearly 
connected,  to  make,  compound,  and  use  the  same.  And  in  the  case  of  any 
macjiine,  he  shall  fully  explain  the  principle,  and  the  several  modes  in  which 
he  has  contemplated  the  application  of  that  principle  or  character,  by  which 
it  may  be  distinguished  from  other  inventions  ;  and  he  shall  accompany  the 
whole  with  drawings  and  written  references,  where  the  nature  of  the  case 
admits  of  drawings,  or  with  specimens  of  the  ingredients,  and  of  the  compo- 
sition of  matter,  sufficient  in  quantity  for  the  purpose  of  experiment,  w-here 
the  invention  is  of  a  composition  of  matter  ;  which  description,  signed  by 
himself  and  attested  by  two  witnesses,  shall  be  filed  in  the  office  of  the  Sec- 
retary of  State,  and  certified  copies  thereof  shall  be  competent  evidence,  in 
all  courts,  where  any  matter  or  thing,  touching  such  patent  right,  shall  come 
in  question.  And  such  inventor  shall,  moreover,  deliver  a  model  of  his  ma- 
chine, provided,  the  secretary  shall  deem  such  model  to  be  necessary." 


THE     SPECIFICATION.  125 

*§,  122.  The  specification,  under  our  law,  occupies  a  relation  to 
the  patent  somewhat  different  from  the  rule  in  England.  In  Eng- 
land, the  specification  does  not  form  part  of  the  patent,  so  as 
to  control  its  construction  ;  but  the  rights  of  the  inventor  are 
made  to  depend  on  the  description  of  his  invention,  inserted  in 
the  title  of  the  patent,  and  cannot  be  helped  by  the  specification, 
the  office  of  which  is  to  describe  the  mode  of  constructing, 
using,  or  compounding  the  invention  mentioned  in  the  patent.^ 
But  in  the  United  States,  the  specification  is  drawn  up  and  filed 
before  the  patent  is  granted,  and  is  referred  to  in  the  patent  itself, 
a  copy  being  annexed.  It  is  therefore  the  settled  rule  in  this 
country  that  the  patent  and  the  specification  are  to  be  construed 
together,  in  order  to  ascertain  the  subject-matter  of  the  inven- 
tion, and  that  the  specification  may  control  the  generality  of  the 
terms  of  the  patent,  of  which  it  forms  a  part.-  In  like  manner 
drawings  annexed  to  a  specification,  in  compliance  with  the 
statute,  are  held  to  form  a  part  of  it,  and  are  to  be  regarded  in 
the  construction  of  the  whole  instrument.^  Where  the  term 
patent,  therefore,  is  used,  in  the  following  discussion  of  the 
rules  of  construction,  it  will  be  understood  to  include  the  speci- 
fication and  drawings  annexed  to  it.'* 

»  Phillips  on  Patents,  p.  223  ;  Godson  on  Patents,  p.  108,  117;  Hogg  r. 
Emerson,  6  Howard  437,  479. 

^  Whittemore  v.  Cutter,  1  Gallis.  429,  437  ;  Barrett  v.  Hall,  1  Mas.  447, 
477  ;  Pitts  v.  Whitman,  2  Story's  R.  609,  621.  So  too  the  specification  may 
enlarge  the  recitals  of  the  invention  in  the  letters.  Hogg  v.  Emerson  ut 
supra. 

^  Earle  v.  Sawyer,  4  Mas.  9.  It  seems,  too,  that  drawings  not  referred 
to  in  the  specification,  may  be  used  to  explain  it.  Washburn  v.  Gould,  3 
Story's  R.  122,  133;  Brooks  v.  Bicknell,  3  M'Lean's  R.  250,  261.  But 
they  must  be  drawings  accompanying  the  specification,  otherwise  they  do 
not  form  a  part  of  it. 

*  The  5th  section  of  the  Act  of  1836  declares  that  "  every  patent  shall  con- 
tain a  short  description  or  title  of  the  invention  or  discovery,  correctly  indi- 
cating its  nature  and  design,"  and  "  referring  to  the  specification  for  the  par- 
ticulars thereof,  a  copy  of  which  shall  be  annexed  to  the  patent,  specifying 
what  the  patentee  claims  as  his  invention  or  discovery."  The  Supreme 
Court  of  the  United  States,  in  a  very  recent  case,  have  held  that  wherever 
11* 


126  LAW    OF     PATENTS. 

<§,  123.  In  construing  patents,  it  is  the  province  of  the  court  to 
determine  what  it  is  that  is  intended  to  be  patented,  and  whether 
the  patent  is  valid  in  point  of  law.  Whether  the  invention  it- 
self be  specifically  described  with  reasonable  certainty  is  a  ques- 
tion of  law  upon  the  construction  of  the  terms  of  the  patent ; 
so  that  it  is  for  the  court  to  determine  whether  the  invention  is 
so  vague  and  incomprehensible  as  in  point  of  law  not  to  be 
patentable,  whether  it  is  a  claim  for  an  improved  machine,  for 
a  combination,  or  a  single  invention  ;  and  in  short,  to  deter- 
mine what  tlie  subject-matter  is,  upon  the  whole  face  of  the 
specification  and  the  accompanying  drawings.^  It  is  therefore 
the  duty  of  the  jury  to  take  the  construction  of  the  patent 
from  the  court,  absolutely,  where  there  are  no  terms  of  art 
made  use  of  which  require  to  be  explained  by  evidence,  and 
no  surrounding  circumstances  to  be  ascertained  as  matter  of 
fact,  before  a  construction  can  be  put  upon  the  instrument. 
But  where  terms  of  art  requiring  explanation  are  made  use  of, 
or  where  the  surrounding  circumstances  affect  the  meaning  of 
the  specification,  these  terms  and  circumstances  are  necessarily 
referred  to  the  jury,  who  must  take  the  construction  from  the 
court,  conditionally,  and  determine  it  according  as  they  find  the 
facts  thus  put  to  them.^ 


this  form,  of  letters  with  a  specification  annexed  and  referred  to,  has  been 
adopted,  either  before  or  since  the  Act  of  1836,  the  specification  is  to  be  con- 
sidered as  part  of  the  letters,  in  construing  them.  Hogg  v.  Emerson,  G 
Howard  437,  482. 

'  Davis  V.  Palmer,  2  Brock.  298;  Lowell  v.  Lewis,  1  Mas.  189  ;  Carver 
r.  Braintree  Manf.  Co.  2  Story,  434,  437,  441;  Washburn  v.  Gould,  3 
Story,  122,  130,  137,  138,  140,  141  ;  DavoU  v.  Brown,  1  Woodbury  & 
Minot,  53,  56. 

*  Washburn  v.  Gould,  ut  supr.  In  Neilson  v.  Harford,  Webs.  Pat.  Cas. 
370,  in  the  Exchequer,  Parke  B.  delivering  the  judgment  of  the  court  said, 
"  Then  we  come  to  the  question  itself,  which  depends  on  theproperconstruciion 
to  be  put  on  the  specification  itself.  It  was  contended,  that  of  this  construction 
the  jury  were  to  judge.  We  are  clearly  of  a  different  opinion.  The  con- 
struction of  all  written  instruments  belongs  to  the  court  alone,  whose  duty 
it  is  to  construe  all  written  instruments,  as  soon  as  the  true  meaning  of  the 
words  in  which  they  are  couched,  and  the  surrounding  circumstances,  if  any, 


THE     SPECIFICATION. 


127 


<§)  124.  It  is,  on  the  other  hand,  the  province  of  the  jury  to 
decide,  on  the  evidence  of  experts,  whether  the  invention  is 
described  in  such  full,  clear,  and  exact  terms,  as  to  enable  a  skilful 
person  to  put  it  in  practice,  from  the  specification  itself.^  As  spe- 
cifications are  drawn  by  persons  more  conversant  with  the  subject 
than  juries,  who  are  selected  indiscriminately  from  the  public, 
and  as  they  are  addressed  to  competent  workmen,  familiar  with 
the  science  or  branch  of  industry  to  which  the  subject  belongs, 
the  evidence  of  those  persons  must  be  resorted  to,  who  are  able 
to  tell  the  jury  that  they  see  enough  on  the  face  of  the  specifi- 
cation to  enable  them  to  make  the  article,  or  reproduce  the  sub- 
ject of  the  patent,  without  difficulty.- 

<§,  125.  The  rule  of  our  law  that  the  specification  may  control 
the  generality  of  the  terms  of  the  patent  must  be  subject  to  this 
qualification.  If  there  is  a  clear  repugnancy  between  the  descrip- 
tion of  the  invention  as  given  in  the  specification,  and  the  inven- 
tion stated  in  the  letlers-patent,  the  patent  will  be  void ;  for  if 
the  letters  are  issued  for  an  invention  that  is  not  described  in 
the  specification,  the  statute  is  not  complied  with.  The  rule 
which  allows  the  letters-patent  to  be  controlled  by  the  specifi- 


have  been  ascertained  by  the  jury  ;  and  it  is  the  duty  of  the  jury  to  take  the 
construction  from  the  court,  either  absolutely,  if  there  be  no  words  to  be 
construed  as  words  of  art,  or  phrases  used  in  commerce,  and  the  surrounding 
circumstances  to  be  ascertained,  or  conditionally,  where  those  words  or  cir- 
cumstances are  necessarily  referred  to  them.  Unless  this  were  so,  there 
would  be  no  certainty  in  the  law,  for  a  misconstruction  by  the  court  is  the 
proper  subject,  by  means  of  a  bill  of  exceptions,  of  redress  in  a  court  of 
error,  but  a  misconstruction  by  the  jury  cannot  beset  right  at  all  effectually. 
Then,  taking  the  construction  of  this  specification  upon  ourselves,  as  we  are 
bound  to  do,  it  becomes  necessary  to  examine  what  the  nature  of  the  inven- 
tion is  which  the  plaintiff  has  disclosed  by  this  instrument." 

'  Davis  ?;.  Palmer,  2  Brock.  298  ;  Lowell  v.  Lewis,  1  Mas.  182,  190; 
Carver  v.  Braintree  Manf.  Co.  2  Story's  R.  432,  437,  441  ;  Washburn  v. 
Gould,  3  Story's  R.  123,  138;  DavoU  i'.  Brown,  1  Woodbury  &  Minot, 
53,  57;  Walton  t>.  Potter,  Webs.  Pat.  Cas.  585,  595. 

2  Walton  V.  Potter,  Webs.  Pat.  Cas.  585,  595. 


128  LAW     OF     PATENTS. 

cation  cannot  extend  to  a  case  where  the  terms  of  the  fornner 
are  inconsistent  with  those  of  the  latter.^ 

<5>  126.  The  general  rule  for  the  construction  of  patents,  in  this 
country,  is,  that  they  are  to  be  construed  liberally,  and  not  to  be 
subjected  to  a  rigid  interpretation.  The  nature  and  extent  of 
the  invention  claimed  by  the  patentee  is  the  thing  to  be  ascer- 
tained ;  and  this  is  to  be  arrived  at,  through  the  fair  sense  of 
the  words  which  he  has  employed  to  describe  his  invention.- 


'  The  case  of  The  King  v.  Wheeler,  4  B.  &  Aid.  345,  presents  an  instance 
of  the  invention  stated  in  the  patent  remaining  wholly  undescribed  by  the 
specification,  which  described  something  else. 

*  Ames  V.  Howard,  1  Sumner,  482, 485  ;  Mr.  Justice  Story  said,  "  Patents 
for  inventions  are  not  to  be  treated  as  mere  monopolies  odious  in  the  eyes  of 
the  law,  and  therefore  not  to  be  favored  ;  nor  are  they  to  be  construed  with 
the  utmost  rigor,  as  strictissimi  juris.  The  Constitution  of  the  United  States, 
in  giving  authority  to  Congress  to  grant  such  patents  for  a  limited  period, 
declares  the  object  to  be  to  promote  the  progress  of  science  and  useful  arts, 
an  object  as  truly  national,  and  meritorious,  and  well  founded  in  public  policy 
as  any  which  can  possibly  be  within  the  scope  of  national  protection.  Hence, 
it  has  always  been  the  course  of  the  American  Courts,  (and  it  has  latterly 
become  that  of  the  English  Courts  also,)  to  construe  these  patents  faiily  and 
liberally,  and  not  to  subject  them  to  any  over-nice  and  critical  refinements. 
The  object  is  to  ascertain,  what,  from  the  fair  sense  of  the  words  of  the  spe- 
cification, is  the  nature  and  extent  of  the  invention  claimed  by  the  party  ; 
and  when  the  nature  and  extent  of  that  claim  are  apparent,  not  to  fritter 
away  his  rights  upon  formal  or  subtle  objections  of  a  purely  technical  char- 
acter." 

In  Blanchard  v.  Sprague,  3  Sumner,  535,  539,  the  same  learned  Judge 
said,  "Formerly,  in  England,  courts  of  law  were  disposed  to  indulge  in  a 
very  close  and  strict  construction  of  the  specifications,  accompanying  patents, 
and  expressing  the  nature  and  extent  of  the  invention.  This  construction 
seems  to  have  been  adopted  upon  the  notion,  that  patent  rights  were  in  the 
nature  of  monopolies,  and,  therefore,  were  to  be  narrowly  watched,  and  con- 
strued with  a  rigid  adherence  to  their  terms,  as  being  in  derogation  of  the 
general  rights  of  the  community.  At  present  a  far  more  liberal  and  expanded 
view  of  the  subject  is  taken.  Patents  for  inventions  are  now  treated  as  a 
just  reward  for  ingenious  men,  and  as  highly  beneficial  to  the  public,  not 
only  by  holding  out  suitable  encouragements  to  genius  and  talents  and  enter- 
prise; but  as  ultimately  securing  to  the  whole  community  great  advantages 


THE    SPECIFICATION.  129 

<§)  127.  But,  at  the  same  time,  it  is  to  be  observed,  that  the  stat- 
ute prescribes  certain  requisites  for  this  description  of  an  invention, 
which  are  of  long  standing ;  and  the  decisions  of  the  courts, 
explaining  and  enforcing  these  requisites,  have  established  cer- 
tain rules  of  construction,  intended  to  guard  the  public  against 
defective  or  insufficient  descriptions,  on  the  one  hand,  and  to 
guard  inventors,  on  the  other  hand,  against  the  acuteness  and 
ingenuity  and  captious  objections  of  rivals  and  pirates.  The 
foundation  of  all  these  rules  of  construction  is  to  be  found  in  the 
object  of  the  specification,  which  may  be  thus  stated,  in  the 
language  of  the  Supreme  Court  of  the  United  States. 

<§>  128.  The  specification  has  two  objects  :  one  is  to  make 
known  the  manner  of  constructing  the  machine  (if  the  invention 
is  of  a  machine)  so  as  to  enable  artisans  to  make  and  use  it,  and 
thus  to  give  the  public  the  full  benefit  of  the  discovery  after  the 
expiration  of  the  patent.  The  other  object  of  the  specification 
is,  to  put  the  public  in  possession  of  what  the  party  claims  as 
his  own  invention,  so  as  to  ascertain  if  he  claim  anything  that 
is  in  common  use,  or  is  already  known,  and  to  guard  against 
prejudice  or  injury  from  the  use  of  an  invention    which  the 

from  the  free  communication  of  secrets,  and  processes,  and  machinery,  which 
may  be  most  important  to  all  the  great  interests  of  society,  to  agriculture,  to 
commerce,  and  to  manufactures,  as  well  as  to  the  cause  of  science  and  art. 
In  America  this  liberal  view  of  the  subject  has  always  been  taken  ;  and  indeed 
it  is  a  natural,  if  not  a  necessary  result,  from  the  very  language  and  intent 
of  the  power  given  to  Congress  by  the  Constitution,  on  this  subject.  Con- 
gress (says  the  Constitution)  shall  have  power  to  promote  the  progress  of 
science  and  useful  arts,  by  securing  for  limited  times  to  authors  and  inventors 
the  exclusive  right  of  their  respective  writings  and  discoveries."  Patents 
then  are  clearly  entitled  to  a  liberal  construction,  since  they  are  not  granted  as 
restrictions  upon  the  rights  of  the  community,  but  are  granted  "  to  promote 
science  and  useful  arts." 

See  also  Ryan  v.  Goodwin,  3  Sumner,  514,  where  it  is  said  that  if  the  court 
can  perceive,  on  the  whole  instrument,  the  exact  nature  and  extent  of  the 
claim  made  by  the  inventor,  it  is  bound  to  adopt  that  interpretation,  and  to 
give  it  full  effect.  See  also  Wyethu.  Stone,  1  Story's  R.  270,  286  ;  Davoll 
f.  Brown,  1  Woodbury  &  Minot,  53,  57. 


130  LAW    OF    PATENTS. 

party  may  otherwise  innocently  suppose  not  to  be  patented. 
It  is,  therefore,  for  tlie  purpose  of  warning  an  innocent  pur- 
chaser or  other  person  using  a  machine,  of  his  infringement  of 
the  patent ;  and  at  the  same  time  of  taking  from  the  inventor 
the  means  of  practising  upon  the  credulity  or  the  fears  of  other 
persons,  by  pretending  that  his  invention  is  more  than  what  it 
really  is,  or  different  from  its  ostensible  objects,  that  the  pa- 
tentee is  required  to  distinguish  his  invention  in  his  specifica- 
tion.^ 

<§>  129.  It  has  been  justly  remarked,  by  a  learned  writer,  that  the 
statute  requisites  for  a  good  specification  run  so  much  into  each 
other,  in  their  nature  and  character,  and  are  so  blended  to- 
gether, that  it  is  difficult  to  treat  of  them  separately.-  But  the 
leading  purposes  of  the  whole  of  the  statute  directions  are  two  ; 
first,  to  inform  the  public  what  the  thing  is  of  which  the 
patentee  claims  to  be  the  inventor,  and  therefore  the  exclusive 
proprietor  during  the  existence  of  his  patent;  second,  to  enable 
the  public,  from  the  specification  itself,  to  practise  the  invention 
thus  described,  after  the  expiration  of  the  patent.  The  princi- 
ples of  construction,  and  the  authorities  from  which  they  are 
drawn  may  therefore  be  discussed  with  reference  to  these  two 
objects. 

*§>  130.  I.  The  first  rule  for  preparing  a  specification  is. 
To  describe  the  subject-matter,  or  what  the  patentee  claims 
to  have  invented,  so  as  to  enable  the  public  to  know  what  his 
claim  is. 

Whether  the  patentee  has  done  this,  in  a  given  case,  is,  as 
we  have  seen,  generally  a  question  of  law  for  the  court,  on  the 
construction  of  the  patent.  It  is  not  necessary  that  the  lan- 
guage employed  should  be  technical,  or  scientifically  accurate, 
although  at  the  same  time  it  must  not  mislead.     If  the  terms 


'  Evans  v.  Eaton,  7  Whealon,  356,  433. 
'  Phillips  on  Patenis,  p.  237. 


THE     SPECIFICATION.  131 

made  use  of  will  enable  the  court  to  ascertain  clearly,  by  fair 
interpretation,  what  the  party  intends  to  claim,  an  inaccuracy 
or  imperfection  in  the  language  will  not  vitiate  the  specification.^ 
But  it  must  appear  with  reasonable  certainty  what  the  party  in- 
tends to  claim ;  for  it  is  not  to  be  left  to  minute  references  and 
conjectures,  as  to  what  was  previously  known  or  unknown  ; 
since  the  question  is  not,  what  was  before  known,  but  what  the 
patentee  claims  as  new.-  If  the  patentee  has  left  it  wholly 
ambiguous  and  uncertain,  so  loosely  defined,  and  so  inaccu- 
rately expressed,  that  the  court  cannot,  upon  fair  interpretation 
of  the  words,  and  without  resorting  to  mere  vague  conjecture 
of  intention,  gather  what  the  invention  is,  then  the  patent  is 
void  for  this  defect.  But  if  the  court  can  clearly  see,  what  is 
the  nature  and  extent  of  the  claim,  by  a  reasonable  use  of  the 
means  of  interpretation  of  the  language  used,  then,  it  is  said, 
the  patentee  is  entitled  to  the  benefit  of  it,  however  imperfectly 
and  inartificially  he  may  have  expressed  himself.  For  this  pur- 
pose, phrases  standing  alone  are  not  to  be  singled  out,  but  the 
whole  is  to  be  taken  in  connexion.^ 


'  Wyeth  V.  Stone,  1  Story's  R.  271,  286  ;  Carver  v.  The  Braintree  Manf. 
Co.  2  Story's  R.  408,  446  ;  Neilson  v.  Harford,  Webs.  Pat.  Cas.  331,  369; 
Bloxam  v.  Elsee,  1  Car.  &  P.  558. 

'^  Lowell  V.  Lewis,  1  Mas.  182,  188.  A  general  statement  that  the  pa- 
tented machine  is,  in  all  material  respects  (without  stating  what  respects,) 
an  improvement  on  an  old  machine,  is  no  specification  at  all-  lb.  See  also 
Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9.  If  the  patent  be  for  an  im- 
proved machine,  or  for  an  improvement  of  a  machine  (the  meaning  of  the 
terms  is  the  same)  it  must  state  in  what  the  improvement  specifically  con- 
sists, and  it  must  be  limited  to  such  improvement.  If,  therefore,  the  terms 
be  so  obscure  or  doubtful,  that  the  court  cannot  say  which  is  the  particular 
improvement  which  the  patentee  claims,  and  to  what  it  is  limited,  the  patent 
is  void  for  ambiguity  ;  and  if  it  covers  more  than  the  improvement,  it  is  void, 
because  it  is  broader  than  the  invention.     Barrett  v.  Hall,  1  Mas.  447. 

»  Ames  V.  Howard,  1  Sumner,  482,  485.  The  drawings  are  to  be  taken 
in  connection  with  the  words,  and  if  by  a  comparison  of  the  words  and  the 
drawings,  the  one  would  explain  the  other  sufficiently  to  enable  a  skilful 
mechanic  to  perform  the  work,  the  specification  is  sufficient.  Bloxam  v. 
Elsee,  1  Car.  &  P.  558. 


132  LAW     OF     PATENTS. 

<§,  131.  The  statute  requires  the  patentee  to  give  "  a  written 
description  of  his  invention  or  discovery."  This  involves  tiie 
necessity,  in  all  cases  where  the  patentee  makes  use  of  what  is 
old,  of  distinguishing  between  what  is  old  and  what  is  new.  He  is 
required  to  point  out  in  what  his  invention  or  discovery  consists  ; 
and  if  he  includes  in  his  description  what  has  been  invented 
before,  without  showing  that  he  does  not  claim  to  have  invented 
that,  his  patent  will  be  broader  than  his  invention,  and  therefore 
void.^     Whatever  appears  to  be  covered  by  the  claim  of  the 


'  Dixon  V.  Moyer,  4  Wash.  68,  73.  In  this  case,  Mr.  Justice  Washing- 
ton said,  "  It  was  insisted  by  the  plaintiff's  counsel,  that  this  specification  is 
perfectly  intelligible  to  an  artist,  who  could  experience  no  difficulty  in 
making  such  a  saddle  as  is  there  described  ;  and  that  if  it  be  not  so,  still  the 
defendant  cannot  avail  himself  of  the  defect,  unless  he  had  stated  it  in  his 
notice,  and  also  proved  at  the  trial  an  intention  in  the  plaintiff  to  deceive  the 
ptiblic.  But  these  observations  are  all  wide  of  the  objection,  which  is  not 
that  the  specification  does  not  contain  the  whole  truth  relative  to  the  discov- 
ery, or  that  it  contains  more  than  is  necessary.  It  is  admitted  that  the  spe- 
cification does  not  offend  in  either  of  these  particulars.  But  the  objection  is, 
that  throughout  the  whole  of  a  very  intelligible  description  of  the  mode  of 
making  the  saddle,  the  patentee  has  not  distinguished  what  was  new,  from 
what  was  old  and  before  in  use,  nor  pointed  out  in  what  particulars  his  im- 
provement consisted."  See  also  Carpenter  v.  Smith,  Webs.  Pat.  Cas.  530, 
532,  where  Lord  Abinger,  C.  B.,  said,  "It  is  required  as  a  condition  of 
every  patent,  that  the  patentee  shall  set  forth  in  his  specification  a  true 
account  and  description  of  his  patent  or  invention,  and  it  is  necessary  in  that 
specification  that  he  should  state  what  his  invention  is,  what  he  claims  to  be 
new,  and  what  he  admits  to  be  old  ;  for  if  the  specification  siates  simply  the 
whole  machinery  which  he  uses,  and  which  he  wishes  to  introduce  in'to  use, 
and  claims  the  whole  of  that  as  new,  and  does  not  state  that  he  claims  either 
any  particular  part,  or  the  combination  of  the  whole  as  new,  why  then  his 
patent  must  be  taken  to  be  a  patent  for  the  whole,  and  for  each  particular 
part,  and  his  patent  will  be  void  if  any  particular  part  turns  out  to  be  old, 
or  the  combination  itself  not  new."  See  also  Davis  v.  Palmer,  2  Brock. 
298  ;  Wyeth  v.  Stone,  1  Story's  R.  73  ;  Lowell  v.  Lewis,  1  Mas.  188, 
where  Mr.  Justice  Story  said,  "  The  patentee  is  clearly  not  entitled  to  in- 
clude in  his  patent  the  exclusive  use  of  any  machinery  already  known  ;  and 
if  he  does,  his  patent  will  be  broader  than  his  invention,  and  consequently 
void.  If,  therefore,  the  description  in  the  patent  mixes  up  the  old  and  the 
new,  and  does  not  distinctly  ascertain  for  which,  in  particular,  the  patent  is 


THE     SPECIFICATION.  133 

patentee,  as  his  own  invention,  must  be  taken  as  part  of  the 
claim,  for  courts  of  law  are  not  at  liberty  to  reject  any  part  of 
the  claim  ;  and  therefore  if  it  turns  out  that  anything  claimed 
is  not  new,  the  patent  is  void,  however  small  or  unimportant 
such  asserted  invention  may  be.^ 

claimed,  it  must  be  void  ;  since  if  it  covers  the  whole,  it  covers  too  much, 
and  if  not  intended  to  cover  the  whole,  it  is  impossible  for  the  court  to  say 
what,  in  particular,  is  covered  as  the  new  invention." 

'  Moody  V.  risk,  2  Mas.  112,  118.  In  this  case,  Mr.  Justice  Story  said, 
"Where  the  patentee  claims  anything  as  his  own  invention,  in  his  specifica- 
tion, courts  of  law  cannot  reject  the  claim  ;  and  if  included  in  the  patent, 
and  found  not  to  be  new,  the  patent  is  void." 

In  the  case  of  Campion  v.  Benyon,  3  Brod.  &  B.  5,  the  patent  was  taken 
out  for  "  an  improved  method  of  making-  sail  cloth,  without  any  starch  what- 
ever." The  real  improvement  consisted  in  a  new  mode  of  texture,  and  not  in 
the  exclusion  of  starch,  the  advantage  of  excluding  that  substance  having 
been  discovered  and  made  public  before.  Park,  J.,  said,  "  In  the  patentee's 
process  he  tells  us  that  the  necessity  of  using  starch  is  superseded,  and  mil- 
dew thereby  entirely  prevented  ;  but  if  he  meant  to  claim  as  his  own  an  im- 
proved method  of  texture  or  twisting  the  thread  to  be  applied  to  the  making 
of  unstarched  cloth,  he  might  have  guarded  himself  against  ambiguity,  5y 
disclaiming  as  his  own  discovery  the  advantage  of  excluding  starch."  In 
this  case,  the  specification  itself  furnished  no  means  by  which  the  generality 
of  its  expressions  could  be  restrained.  But  there  is  a  case  where  the  literal 
meaning  of  terms  which  would  have  covered  too  much  ground,  was  limited 
by  other  phrases  used  in  the  context.  The  specification  stated  the  invention 
to  be  an  improved  apparatus  for  "  extracting  inflammable  gas  by  heat,  from 
pit-coal,  tar,  or  any  other  substance  from  which  gas  or  gases,  capable  of  being 
employed,  for  illumination,  can  be  extracted  by  heat."  Lord  Tenterden 
held  that  the  words  "any  other  substance"  must  mean  other  substances 
ejusdem  generis  ;  and  therefore  that  it  was  not  a  fatal  defect  that  the  appara- 
tus would  not  extract  gas  from  oil  ;  and  that  oil  was  not  meant  to  be  in- 
cluded, it  being  at  that  time  considered  too  expensive  for  the  making  of  gas 
for  purposes  of  illumination,  though  it  was  known  to  be  capable  of  being  so 
used.  Crossley  v.  Beverly,  3  Car.  &  P.  513  ;  Webs.  Pat.  Cas.  106.  Upon 
this  distinction,  Mr.  Webster  remarks  that  "  the  true  principle  would  appear 
to  be  the  intention  of  the  party  at  the  time,  first,  as  expressed  distinctly  on 
the  face  of  the  specification;  and  secondly,  as  may  be  inferred  therefrom, 
according  to  the  slate  of  knowledge  at  the  time,  and  other  circumstances." 
Webs.  Pat.  Cases,  110,  note.  —  Where  the  patentee  in  his  specification 
claimed  "an  improvement  in  the  construction  of  the  axles  or  bearings  of 
Ta.\\w3iy  or  other  wheeled  carriages,"  and  it  appeared  that  the  improvement, 
12 


134  LAW     OF     PATENTS. 

<§,  13-2.  But  there  is  a  very  important  rule  to  be  attended  to, 
in  this  connection,  wliich  has  been  laid  down  by  the  Court  of 
Common  Pleas  in  England  :  viz.,  that  a  specification  should  be 
so  construed,  as,  consistently  with  the  fair  import  of  language, 
will  make  the  claim  co-extensive  with  the  actual  discovery.  So 
that,  a  patentee,  unless  his  language  necessarily  imports  a  claim 
of  things  in  use,  will  be  presumed  not  to  intend  to  claim  things 
which  he  must  know  to  be  in  use.^ 

<§>  133.  The  object  of  the  distinction  between  what  is  new  and 


thouoh  it  had  never  before  been  applied  to  railway  carriages,  was  well  known 
as  applied  to  other  carriages,  it  was  held  that  the  patent  was  not  good. 
Winans  v.  Providence  R.  Road  Company,  2  Story's  R.  412. 

*  Haworth  v.  Hardcastle,  Webs.  Pat.  Cas.  480,  484.  In  this  case, 
Sir  N.  C.  Tindall,  C.  J.  said,  "  As  to  the  second  ground  upon 
which  the  motion  for  a  nonsuit  proceeded,  we  think,  upon  the  fair 
construction  of  the  specification  itself,  the  patentee  does  not  claim 
as  part  of  his  invention,  either  the  rails  or  staves  over  which  the  cali- 
coes and  other  cloths  are  to  be  hung,  or  the  placing  them  at  the  upper 
part  of  the  building.  The  use  of  rails  and  staves  for  this  purpose  was 
proved  to  have  been  so  general  before  the  granting  of  this  patent,  that  it 
would  be  almost  impossible  d,  'priori  to  suppose  that  the  patentee  intended  to 
claim  what  he  could  not  but  know  would  have  avoided  his  patent,  and  the 
express  statement  that  he  makes,  '  that  he  constructs  the  stove  or  drying 
house  in  a  manner  nearly  similar  io  those  which  are  at  present  in  use,  and 
that  he  arranges  the  rails  or  staves  on  which  the  cloth  or  fabric  is  intended 
to  be  hung  or  suspended,  near  to  the  upper  part  of  the  said  stove  or  drying 
house,'  shows  clearly  that  he  is  speaking  of  those  rails  or  staves  as  of 
things  then  known  and  in  common  use,  for  he  begins  with  describing  the  dry- 
ing house  as  nearly  similar  to  those  in  common  use  ;  he  gives  no  dimensions 
of  the  rails  or  staves,  no  exact  position  of  them,  nor  any  particular  descrip- 
tion by  reference,  as  he  invariably  does  when  he  comes  to  that  part  of  the 
machinery  which  is  peculiarly  his  own  invention.  There  can  be  no  rule  of 
law  which  requires  the  court  to  make  any  forced  construction  of  the  specifi- 
cation, so  as  to  extend  the  claim  of  the  patentee  to  a  wider  range  than  the 
facts  would  warrant ;  on  the  contrary,  such  construction  ought  to  be  made  as 
will,  consistently  with  the  fair  import  of  the  language  used,  make  the  claim 
of  invention  coextensive  with  the  new  discovery  of  the  grantee  of  the  patent. 
And  we  see  no  reason  to  believe  that  he  intended  under  this  specification  to 
claim  either  the  staves,  or  the  position  of  the  staves  as  to  their  height  in  the 
drying  house,  as  a  part  of  his  own  invention." 


THE     SPECIFICATION.  135 

what  is  old  is  to  show  distinctly  what  the  patentee  claims  as  his 
invention.  But  it  has  been  said,  that  the  mere  discrimination 
between  what  is  old  and  what  is  new  will  not,  in  all  cases,  show 
this,  for  perhaps  the  patentee  does  not  claim  all  that  is  new.^ 
But  the  meaning  of  the  authorities,  as  well  as  the  purpose  of  the 
statute,  shows  that  the  object  of  the  specification  is,  to  state  dis- 
tinctly what  the  patentee  claims  as  the  subject-matter  of  his 
invention  or  discovery  ;  and  the  discrimination  commonly  made 
between  what  is  new  and  what  is  old,  is  one  of  the  means  ne- 
cessary to  present  clearly  the  subject-matter  of  the  invention  or 
discovery.-  In  order  to  make  this  discrimination,  the  patentee 
is  not  confined  to  any  precise  form  of  words.^  The  more  usual 
form  is  to  state  affirmatively  what  the  patentee  claims  as  new, 
and  if  he  makes  use  of  anything  old,  to  state  negatively  that  he 
does  not  claim   that  thing.''     It  is  not  enough  that  the  thing 


•  Phillips  on  Patents,  270. 

*  See  Barrett  v.  Hall,  1  Mas.  475  ;  Woodcock  v.  Parker,  1  Gallis.  438; 
Whittemore  v.  Cutter,  lb.  478 ;  Odiorne  v.  Winkley,  2  Gallis.  51  ;  Evans 
V.  Eaton,  3  Wheat.  534;  7  lb.  356  ;  Wyeth  v.  Stone,  1  Story's  R.  273  ; 
Ames  V.  Howard,  1  Sumner,  482. 

'  Wyeth  V.  Stone,  1  Story's  R.  73. 

•*  If  a  specification  truly  sums  up  and  distinguishes  the  invention  of  the 
patentee,  it  will  not  be  open  to  the  objection  of  being  too  broad,  although  it 
describes  with  unnecessary  minuteness,  a  process  well  known  to  those  con- 
versant with  the  art.  Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9,  14.  See 
also  Ames  v.  Howard,  1  Sumner,  482,  485.  Mr.  Godson  gives  the  follow- 
ing directions  for  drawing  specifications  :  "  That  the  new  parts  of  the  sub- 
ject may  be  more  clearly  seen  and  easily  known,  the  patentee  must  not  only 
claim  neither  more  nor  less  than  his  own  invention,  but  he  must  not  appear 
even  unintentionally  to  appropriate  to  himself  any  part  which  is  old,  or  has 
been  used  in  other  manufactures.  (Huddart  v.  Grimshaw,  Dav.  Pat.  Gas. 
295.)  Those  parts  that  are  old  and  immaterial,  or  are  not  of  the  essence  of 
the  invention,  should  either  not  be  mentioned,  or  should  be  named  only  to 
be  designated  as  old.  The  patentee  is  not  required  to  say  that  a  screw  or 
bobbin,  or  anything  in  common  use,  is  not  part  of  his  discovery  ;  yet  he 
must  not  adopt  the  invention  of  another  person,  however  insignificant  it 
may  appear  to  be,  without  a  remark.  If  any  parts  are  described  as  essential 
without  a  protest  against  any  novelty  being  attached  to  them,  it  will  seem, 
though  they  are  old,  that  they  are  claimed  as  new.     Bovill  v.  Moore,  Dav. 


136  LAW     OF     PATENTS. 

designed  to  be  embraced  by  the  patent,  should  be  made  appa- 
rent on  the  trial,  by  a  comparison  of  the  new  with  the  old  ma- 
chine. The  specification  mast  distinguish  the  new  from  the 
old,  so  as  to  point  out  in  what  the  improvement  consists.^ 

<§.  134.  In  describing  what  is  old,  it  is  not  always  necessary  to 
enter  into  detail.  Things  generally  known,  or  in  common  use, 
may  be  referred  to  in  general  terms,  provided  they  create  no  am- 
biguity or  uncertainty,  and  provided  such  reference  is  accompa- 
nied by  an  intelligible  description  of  what  is  new.^  In  describing 
an  improvement  of  a  machine,  or  what  is  the  same  thing,  an 
improved  machine,  great  care  must  be  taken  not  to  describe  the 
whole  in  such  a  way  as  to  make  it  appear  to  be  claimed  as  the 
invention  of  the  patentee.  The  former  machine,  or  other  thing, 
should  be  set  forth  in  the  patent  sufficiently  to  make  known, 
according  to  the  nature  of  the  case,  what  it  is  that  the  patentee 
engrafts  his  improvement  upon  ;  he  should  then  disclaim  the 
invention  of  the  thing  thus  referred  to  or  described,  and  state 
distinctly  his  improvement  as  the  thing  which  he  claims  to  have 
invented.^     One  of  the  most  common  defects  in  a  specification, 

Pat.  Cas.  404  ;  Manton  v.  Parker,  Dav.  Pat.  Cas.  329.)  The  construction  will 
be  against  the  patentee  that  he  seeks  to  monopolize  more  than  he  has  invented, 
or  that,  by  dwelling  in  his  description  on  things  that  are  immaterial  or  known, 
he  endeavors  to  deceive  the  public,  who  are  not  to  be  deterred  from  using 
anything  that  is  old  by  its  appearing  in  the  specification  as  newly  invented. 
They  are  to  be  warned  against  infringing  on  the  rights  of  the  patentee,  but 
are  not  to  be  deprived  of  a  manufacture  which  they  before  possessed.  (Dav. 
Pat.  Cas.  279,  and  3  Meriv.  629.)  It  seems,  therefore,  to  be  the  safest  way 
in  the  specification  to  describe  the  whole  subject,  and  then  to  point  out  all 
the  parts  which  are  old  and  well  known."     Godson  on  Patents,  128. 

'  Dixon  V.  Mover,  4  Wash.  R.  68. 

"  Davis  V.  Palmer,  2  Brock.  298. 

^  In  Hill  V.  Thompson,  8  Taunt.  375,  Lord  Ch.  J.  Dallas  said,  "  This, 
like  every  other  patent,  must  undoubtedly  stand  on  the  ground  of  improve- 
ment or  discovery.  If  of  improvement,  it  must  stand  on  the  ground  of 
improvement  invented;  if  of  discovery,  it  must  stand  on  the  ground  of  the 
discovery  of  something  altogether  new  ;  and  the  patent  must  distinguish  and 
adapt  itself  accordingly."     See  also  Bovill  v.  Moore,  Dav.  Pat.  Cas.  398. 


THE     SPECIFICATION.  137 

consists  in  that  sort  of  vagueness  and  ambiguity  in  the  manner  of 
describing  the  invention,  which  makes  it  difficult  or  impossible  to 
determine  what  the  invention  is.  This  is  an  objection  distinct 
from  an  ambiguity  in  the  terms  made  use  of.  Thus,  where  the 
directions  contained  in  a  specification  were  "  to  take  any  quan- 
tity of  lead  and  calcine  it,  or  minium,  or  red  lead,"  the  objec- 
tion was  that  it  was  uncertain  whether  the  minium  and  red 
lead  were  to  be  calcined,  or  only  the  lead.^  So  too,  if  it  be 
stated  that  a  whole  class  of  substances  may  be  used  to  produce 
a  given  effect,  Vv'hen,  in  fact,  only  one  is  capable  of  being  so 
used  successfully,  an  ambiguity  is  at  once  produced,  and  the 
public  are  misled  ;  -  but  if  the  patentee  states  the  substances 
which  he  makes  use  of  himself,  and  there  are  still  other  sub- 
stances which  will  produce  the  effect,  and  he  claims  them  by  a 
generic  description,  as  comprehended  within  his  invention,  his 
claim  will  not  be  void  for  ambiguity,  or  too  broad  for  his  inven- 
tion, provided  the  combination  is  new  in  respect  to  all  the  sub- 
stances thus  referred  to.'^ 


*  Turner  v.  Winter,  Webs.  Pat.  Cas.  80.  Another  objection  taken,  was, 
as  to  the  white  lead,  which  the  patent  professed  to  make  by  the  same  pro- 
cess by  which  it  made  something  else ;  to  which  it  was  answered,  that  the 
invention  did  not  profess  to  make  common  white  lead.  Ashurst,  J.,  said, 
"  But  that  is  no  answer;  for  if  the  patentee  had  intended  to  produce  some- 
thing only  like  while  lead,  or  answering  some  of  the  purposes  of  common 
white  lead,  it  should  have  been  so  expressed  in  the  specification.  But  in 
truth,  the  patent  is  for  making  white  lead  and  two  other  things  by  one  pro- 
cess. Therefore,  if  the  process,  as  directed  by  the  specification,  does  not 
produce  that  which  the  patent  professes  to  do,  the  patent  itself  is  void." 

^  Bickford  v.  Skewes,  Webs.  Pat.  Cas.  218.  If  more  parts  be  inserted 
than  are  necessary,  as  ten,  where  four  are  sufficient,  the  specification  is  void. 
The  King  v.  Arkwright,  Webs.  Pat.  Cases,  70. 

'  Ryan  v.  Goodwin,  3  Sumner,  514,  519.  In  this  case,  Mr.  Justice  Story 
said,  "Then  as  to  the  third  point.  This  turns  upon  the  supposed  vagueness, 
and  ambiguity,  and  uncertainty  of  the  specification  and  claim  of  the  invention 
thereby.  The  specification,  after  adverting  to  the  fact,  that  the  loco-foco 
matches,  so  called,  are  a  compound  of  phosphorus,  chlorate  of  potash,  sul- 
phuret  of  antimony,  and  gum  arabic  or  glue,  proceeds  to  state  that  the 
compound  which  he,  (Phillips)  uses,  '  consists  simply  of  phosphorus,  chalk, 
12* 


138  LAW    OF     PATENTS. 

^5,  135.  In  like  manner,  where  a  particular  effect  or  purpose  in 
machinery  is  a  part  of  the  invention,  and  that  effect  may  be  pro- 

and  glue  ; '  and  he  then  states  the  mode  of  preparing  the  compound,  and  the 
proportions  of  the  ingredients ;  so  that  as  here  stated,  the  essential  differ- 
ence between  his  own  matches  and  those  called  loco-foco,  consists  in  the 
omission  of  chlorate  of  potash  and  sulphuret  of  antimony,  and  using  in  lieu 
thereof  chalk.  He  then  goes  on  to  state,  that  '  the  proportions  of  the  ingre- 
dients may  be  varied,  and  that  gum  arable,  or  other  gum,  may  be  substituted 
for  glue  ;  and  other  absorbent  earths  or  materials  may  be  used  instead  of 
carbonate  of  lime.'  He  afterwards  sums  up  his  invention  in  the  following 
terms:  '  What  I  claim  as  my  invention  is  the  using  of  a  paste  or  composition 
to  ignite  by  friction,  consisting  of  phosphorus,  and  [an]  earthy  material,  and 
a  glutinous  substance  only,  without  the  addition  of  chlorate  of  potash,  or  of 
any  other  highly  combustible  material,  such  as  sulphuret  of  antimony,  in  ad- 
dition to  the  phosphorus.  I  also  claim  the  mode  herein  described,  of  putting 
up  the  matches  in  paper,  so  as  to  secure  them  from  accidental  friction.' 
Upon  this  last  claim  I  need  say  nothing,  as  it  is  not  in  controversy,  as 
a  part  of  the  infringement  of  the  patent,  upon  the  present  trial.  Now,  I 
take  it  to  be  the  clear  rule  of  our  law  in  favor  of  inventors,  and  to  carry  into 
effect  the  obvious  object  of  the  constitution  and  laws  in  granting  patents, 
'  to  promote  the  progress  of  science  and  useful  arts,'  to  give  a  liberal  con- 
struction to  the  language  of  all  patents,  and  specifications  {ut  res  magis 
valeat,  quam  pereat)  so  as  to  protect,  and  not  to  destroy  the  rights  of  real 
inventors.  If,  therefore,  there  be  any  ambiguity  or  uncertainty  in  any  part 
of  the  specification  ;  yet,  if  taking  the  whole  together,  the  court  can  perceive 
the  exact  nature  and  extent  of  the  claim  made  by  the  inventor,  it  is  bound  to 
adopt  that  interpretation,  and  to  give  it  full  effect.  I  confess,  that  I  do  not 
perceive  any  ground  for  real  doubt  in  the  present  specification.  The  inventor 
claims  as  his  invention  the  combination  of  phosphorus  with  chalk  or  any  other 
absorbent  earth,  or  earthy  material,  and  glue,  or  any  other  glutinous  sub- 
stance in  making  matches,  using  the  ingredients  in  the  proportions,  substan- 
tially as  set  forth  in  the  specification.  Now,  the  question  is,  whether  such 
a  claim  is  good,  or  whether  it  is  void,  as  being  too  broad  and  comprehensive. 
The  argument  seems  to  be,  that  the  inventor  has  not  confined  his  claim  to 
the  use  of  chalk,  but  has  extended  it  to  the  use  of  any  other  absorbent  earths 
or  earthy  materials,  which  is  too  general.  So,  he  has  not  confined  it  to  the 
use  of  glue,  or  even  of  gum  arable,  but  has  extended  it  also  to  any  other 
gum  or  glutinous  substance,  which  is  also  too  general.  Now,  it  is  observa- 
ble, that  the  patent  act  of  1793,  c.  55,  does  not  limit  the  inventor  to  one 
single  mode,  or  one  single  set  of  ingredients,  to  carry  into  effect  his  inven- 
tion. He  may  claim  as  many  modes,  as  he  pleases,  provided  always,  that 
the  claim   is  limited   to  such,  as  he  has  invented,  and  as  are  substantially 


THE     SPECIFICATION.  139 

duced  in  several  modes,  it  is  sufficient  for  the  patentee  to  state 
the  modes  which  he  contemplates  as  best,  and  his  claim  will 
not  be  void,  as  too  vague  or  comprehensive,  although  he  claims 


new.  Indeed,  in  one  section  {^  3,)  the  act  requires,  in  the  case  of  a 
machine,  that  the  inventor  shall  fully  explain  the  principle,  and  the  several 
modes,  in  which  he  has  contemplated  the  application  of  that  principle  or 
character,  by  which  it  may  be  distinguished  from  other  inventions.  The 
same  enactnnent  exists  in  the  patent  act  of  1836,  c.  357,  §  6.  I  do  not  know 
of  any  principle  of  law,  which  declares,  that,  if  a  man  makes  a  new  com- 
pound, wholly  unknown  before  for  a  useful  and  valuable  purpose,  he  is  lim- 
ited to  the  use  of  the  same  precise  ingredients  in  making  that  compound  ; 
and  that,  if  the  same  purpose  can  be  accomplished  by  him  by  the  substitudon 
in  part  of  other  ingredients  in  the  composition,  he  is  not  at  liberty  to  extend 
his  patent  so  as  to  embrace  them  also.  It  is  true,  that  in  such  a  case  he  runs 
the  risk  of  having  his  patent  avoided,  if  either  of  the  combinations,  the  origi- 
nal, or  the  substituted,  have  been  known  or  used  before  in  the  like  combina- 
tion. But,  if  all  the  various  combinations  are  equally  new,  I  do  not  perceive, 
how  his  claim  can  be  said  to  be  too  broad.  It  is  not  more  broad  than  his  in- 
vention. There  is  no  proof  in  the  present  case,  that  the  ingredients  enume- 
rated in  this  specification,  whether  chalk,  or  any  other  absorbent  earth,  or 
earthy  substance  were  ever  before  combined  with  phosphorus,  and  glue,  or 
any  gum  or  other  glutinous  substance,  to  produce  a  compound  for  matches. 
The  objection,  so  far  as  it  here  applies,  is  not,  that  these  gums  or  earths 
have  been  before  so  combined  with  phosphorus,  but  that  the  inventor  extends 
his  claim,  so  as  to  include  all  such  combinations.  There  is  no  pretence  to 
say,  upon  the  evidence,  that  the  specification  was  intended  to  deceive  the 
public,  or  that  it  included  other  earthy  materials  than  chalk,  or  other  gluti- 
nous substances  than  glue,  for  the  very  purpose  of  misleading  the  public. 
The  party  has  stated  frankly,  what  he  deems  the  best  materials,  phosphorus, 
chalk,  and  glue,  and  the  proportions  and  mode  of  combining  them.  But,  be- 
cause he  says,  that  there  may  be  substitutes  of  the  same  general  character, 
which  may  serve  the  same  purpose,  thereby  to  exclude  other  persons  from 
evading  his  patent,  and  depriving  him  of  his  invention,  by  using  one  or  more 
of  the  substitutes,  if  the  patent  had  been  confined  to  the  combination  solely 
of  phosphorus,  chalk,  and  glue,  I  cannot  hol3  that  his  claim  is  too  broad,  or 
that  it  is  void.  My  present  impression  is,  that  the  objection  is  not  well 
founded.  Suppose  the  invention  had  been  of  a  machine,  and  the  inventor 
had  said,  I  use  a  wheel  in  a  certain  part  of  the  machine  for  a  certain  purpose, 
but  the  same  effect  may  be  produced  by  a  crank,  or  a  lever,  or  a  toggle  joint, 
and  therefore  I  claim  these  modes  also  ;  it  would  hardly  be  contended,  that 
such  a  claim  would  avoid  his  patent.     I  do  not  know,  that  it  has  ever  been 


140  LAW    OF     PATENTS. 

the  variations  from  those  modes  as  being  equally  his  invention, 
without  describing  the  manner  of  producing  those  variations.^ 

<§,  136.  This  kind  of  ambiguity  is  also  distinguishable  from  the 


decided,  that,  if  the  claim  of  an  inventor  for  an  invention  of  a  compound  states 
the  ingredients  truly,  which  the  inventor  uses  to  produce  the  intended  effect, 
the  suggestion,  that  other  ingredients  of  a  kindred  nature  may  be  substituted 
for  some  part  of  them,  has  been  held  to  avoid  the  patent  in  toto,  so  as  to 
make  it  bad,  for  what  is  specifically  stated.  In  the  present  case  it  is  not 
necessary  to  consider  that  point.  My  opinion  is,  that  the  specification  is  not, 
in  point  of  law,  void,  from  its  vagueness,  or  generality,  or  uncertainty." 

'  Carver  v.  Braintree  Manf.  Co.  2  Story's  R.  432,  440.  "  Another  objec- 
tion is,  that  the  plaintiff,  in  his  claim,  has  stated,  that  the  desired  distance  or 
space  between  the  upper  and  the  lower  surfaces  of  the  rib,  whether  it  '  be 
done  by  making  the  ribs  thicker  at  that  part,  or  by  a  fork  or  division  of  the 
rib,  or  by  any  other  variation  of  the  particular  form,'  is  a  part  of  his  inven- 
tion. It  is  said,  that  the  modes  of  forking  and  dividing  are  not  specified,  nor 
the  variations  of  the  particular  form  given.  This  is  true  ;  but  then  the  patent 
act  requires  the  patentee  to  specify  the  several  modes,  '  in  which  he  has  con- 
templated the  application  of  the  distinguishing  principle  or  character  of  his  in- 
vention.' (Act  of  1836,  ch.  357,^0.)  Now,  we  all  know  that  a  mere  difference 
of  form  will  not  entitle  a  party  to  a  patent.  What  the  patentee  here  says  in 
effect  is  :  One  important  part  of  my  invention  consists  in  the  space  or  distance 
between  the  upper  and  lower  surfaces  of  the  ribs,  and  whether  this  is  ob- 
tained by  making  the  rib  solid,  or  by  a  fork,  or  division  of  the  rib,  or  by  any 
other  variation  of  the  form  of  the  rib,  I  equally  claim  it  as  my  invention. 
The  end  to  be  obtained  is  the  space  or  distance  equal  to  the  fibre  of  the  cot- 
ton to  be  ginned  ;  and  you  may  make  the  rib  solid,  or  fork  it,  or  divide  it,  or 
vary  its  form  in  any  other  manner,  so  as  that  the  purpose  is  obtained.  The 
patentee,  therefore,  guards  himself  against  the  suggestion,  that  his  invention 
consists  solely  in  a  particular  form,  solid,  or  forked,  or  divided  ;  and  claims 
the  invention  to  be  his,  whether  the  exact  form  is  preserved,  or  not,  if  its 
proportions  are  kept  so  as  to  be  adapted  to  the  fibre  of  the  cotton  which  is 
to  be  ginned.  In  all  this  I  can  perceive  no  want  of  accuracy  or  sufficiency 
of  description,  at  least  so  far  aS  it  is  a  matter  of  law,  nor  any  claim,  broader 
than  the  invention,  which  is  either  so  vague  or  so  comprehensive,  as,  in 
point  oflaw,  not  to  be  patentable.  It  was  not  incumbent  upon  the  patentee 
to  suggest  all  the  possible  modes  by  which  the  rib  might  be  varied,  and  yet 
the  effect  produced.  It  is  sufficient  for  him  to  state  the  modes  which  he 
contemplates  to  be  best,  and  to  add,  that  other  mere  formal  variations  from 
these  modes  he  does  not  deem  to  be  unprotected  by  his  patent." 


THE    SPECIFICATION.  141 

want  of  clear  or  specific  directions,  which  will  enable  a  mechanic 
to  make  the  thing  described.  A  specification  may  be  perfectly 
sufficient,  as  to  the  point  of  stating  what  the  invention  is,  and 
yet  the  directions  for  making  the  thing  may  be  so  vague  and 
indefinite,  as  not  to  enable  a  skilful  mechanic  to  accomplish  the 
object.^  It  is  for  this  reason,  as  we  have  seen,  that  the  question, 
whether  the  specification  discloses  what  the  invention  is,  is  a 
question  for  the  court  on  construction  of  the  patent ;  while  the 
question,  whether  it  sufRciendy  describes  the  mode  of  carrying 
the  invention  into  practice,  is  a  question  for  the  jury.- 


•  It  may  not,  perhaps,  be  easy  to  draw  a  precise  line  of  distinction 
between  a  specification  so  uncertain,  as  to  claiiB  no  particular  improvement, 
and  a  specification  so  uncertain  as  not  to  enable  a  skilful  workman  to  under- 
stand the  improvement,  and  to  construct  it.  Yet,  we  think  the  distinction 
exists.  If  it  does,  it  is  within  the  province  of  the  jury  to  decide,  whether  a 
skilful  workman  can  carry  into  execution  the  plan  of  the  inventor.  In 
deciding  this  question,  the  jury  will  give  a  liberal  common  sense  construc- 
tion to  the  directions  of  the  specification."  Per  Marshall,  C.  J.,  in  Davis  v. 
Palmer,  2  Brock.  298,  308, 

^  Thus,  in  the  case  of  a  patent  for  "a  new  and  useful  improvement 
in  the  ribs  of  the  cotton  gin,"  Mr.  Justice  Story  said  "  It  is  true,  that  the 
plaintiff  in  his  specification,  in  describing  the  thickness  of  the  rib  in  his 
machine,  declares,  that  it  should  be  so  thick,  that  the  distance  or  depth  be- 
tween the  upper  and  the  lower  surface  should  be  '  so  great  as  to  be  equal  to 
the  length  of  the  fibre  to  be  ginned,'  which,  it  is  said,  is  too  ambiguous  and 
indefinite  a  description  to  enable  a  mechanic  to  make  it,  because  it  is  notorious, 
that  not  only  the  fibres  of  different  kinds  of  cotton  are  of  different  lengths,  long 
staple  and  short  staple  ;  but  that  the  different  fibres  in  the  same  kind  of  cotton 
are  of  unequal  lengths.  And  it  is  asked,  what  then  is  to  be  the  distance  or 
depth  or  thickness  of  the  rib?  Whether  a  skilful  mechanic  could  from  this 
description  make  a  proper  rib  for  any  particular  kind  of  cotton,  is  a  matter 
of  fact,  which  those  only,  who  are  acquainted  with  the  structure  of  cotton 
gins,  can  properly  answer.  If  they  could,  then  the  description  is  sufficient, 
although  it  may  require  some  niceties  in  adjusting  the  different  thicknesses 
to  the  different  kinds  of  cotton.  If  they  could  not,  then  the  specification  is 
obviously  defective.  But  I  should  suppose,  that  the  inequalities  of  the  dif- 
ferent fibres  of  the  same  kind  of  cotton  would  not  necessarily  present  an 
insurmountable  difficulty.  It  may  be,  that  the  adjustment  should  be  to  be 
made  according  to  the  average  length  of  the  fibres,  or  varied  in  some  other 
way.     But  this  is  for  a  practical  mechanic  to  say,  and  not  for  the  Court. 


142  LAW    OF    PATENTS. 

<§,  137.  The  ambiguity  produced  by  a  too  great  fulness  of 
detail  in  the  specification  is  likely  to  mislead  both  in  determin- 
ing what  the  invention  claimed  is,  and  in  determining  whether 
it  is  described  with  such  accuracy  as  will  enable  a  competent 
workman  to  put  it  in  practice.  We  shall  have  occasion  here- 
after to  state  the  rule,  that  the  patentee  is  bound  to  disclose  the 
most  advantageous  mode  known  to  him  ;  and  any  circumstance 
conducive  to  the  advantageous  operation  of  his  invention  ;  and 
it  is  a  correlative  of  this  rule,  that  if  things  wholly  useless  and 
unnecessary  are  introduced  into  the  specification,  as  if  they 
were  essential,  although  the  terms  are  perfectly  intelligible,  and 
every  necessary  description  has  been  introduced,  and  the  parts 
claimed  are  all  newly  invented,  the  patent  may  be  declared 
void.  The  presumption,  in  such  cases,  according  to  the  Eng- 
lish authorities,  is,  that  the  useless  and  unnecessary  descriptions 
were  introduced  for  the  purpose  of  overloading  the  subject  and 
clouding  the  description,  in  order  to  mislead  the  public  and  con- 
ceal the  real  invention.^ 


What  I  mean,  therefore,  to  say  on  this  point  is,  that,  as  a  matter  of  law,  I 
cannot  say,  that  this  description  is  so  ambiguous,  that  the  patent  is  upon  its 
face  void.  It  may  be  less  perfect  and  complete  than  would  be  desirable, 
but  still  it  maybe  sufficient  to  enable  a  skilful  mechanic  to  attain  the  end. 
In  point  of  fact,  is  it  not  actually  attained  by  the  mechanics  employed  by 
Carver,  vi^ithout  the  application  of  any  new  inventive  power,  or  experiments? 
If  so,  then  the  objection  could  be  answered  as  a  matter  of  fact  or  a  practical 
result."  Carver  v.  The  Braintree  Manufacturing  Conipany,  2  Story's  R. 
432,  437. 

In  Arkwright's  case,  several  things  were  introduced  into  the  specifica- 
tion, of  which  he  did  not  make  use.  Buller,  J.,  said,  "Wood  put  No.  4, 
5,  6,  and  7,  together,  and  that  machine  he  has  worked  ever  since  ;  he  don't 
recollect  that  the  defendant  used  anything  else.  If  that  be  true,  it  will 
blow  up  the  patent  at  once  ;  he  says  he  believes  nobody  that  ever  practised 
would  find  anything  necessary  upon  this  paper  but  the  No.  4,  5,  6,  and  7  ; 
he  should  look  after  no  others.  Now  if  four  things  only  were  necessary 
instead  often,  the  specification  does  not  contain  a  good  account  of  the  inven- 
tion."    The  King  v.  Arkwright,  Webs.  Pat.  Cas.  70. 

In  Turner's  patent  for  producing  a  yellow  color,  minium  was  directed  to 
be   used  among  other  things,  but  it  appeared  that  it  would  not  produce  the 


THE    SPECIFICATION.  143 

<§)  13S.  There  is  one  case  where  it  seems  to  have  been  held 
that  an  improved  mode  of  working  his  machine  by  the  patentee, 
different  from  the  specification  of  his  patent,  casts  upon  him  the 
burthen  of  showing  that  he  made  the  improvement  subsequently 
to  the  issuing  of  his  patent,  otherwise  it  will  be  presumed  that 
he  did  not  disclose  in  his  specification  the  best  method  known 
to  him.^  But  where  a  patentee  of  an  improved  machine 
claimed  as  his  invention  a  part  of  it  which  turned  out  to  be  use- 
less, it  was  held  that  this  did  not  vitiate  the  patent,  the  specifi- 
cation not  describing  it  as  essential  to  the  machine.^  At  the 
same  time,  it  is  necessary  that  the  specification  should  be  full 
and  explicit  enough  to  prevent  the  public  from  infringing  the 
right  of  the  patentee.  An  infringement  will  not  have  taken 
place,  unless  the  invention  can  be  practised  completely  by  fol- 
lowing the  specification  ;  otherwise,  it  has  been  said,  it  would 
be  an  infringement  to  do  that  perfectly,  which,  according  to  the 
specification,  requires  something  else  to  be  done  to  make  it  per- 
fect. An  infringement  is  a  copy  made  after  and  agreeing  with 
the  principle  laid  down  in  the  patent ;  ^  and  if  the  patent  does 
not  fully  describe  everything  essential  to  the  making  or  doing  of 
the  thing  patented,  there  will  be   no  infringement  by  the  fresh 


desired  effect.  The  same  learned  judge  said,  "  Now  in  this  case  no  evi- 
dence was  offered  by  the  plaintiff  to  show  that  he  had  ever  made  use  of  the 
several  different  ingredients  mentioned  in  the  specification,  as  for  instance 
minium,  which  he  had  nevertheless  inserted  in  the  patent ;  nor  did  he  give 
any  evidence  to  show  how  the  yellow  color  was  produced.  If  he  could 
make  it  with  two  or  three  of  the  ingredients  specified,  and  he  has  inserted 
others  which  will  not  answer  the  purpose,  that  will  avoid  the  patent.  So  if 
he  makes  the  article,  for  which  the  patent  is  granted,  with  cheaper  materials 
than  those  which  he  has  enumerated,  although  the  latter  will  answer  the 
purpose  equally  well,  the  patent  is  void,  because  he  does  not  put  the  public 
in  possession  of  his  invention,  or  enable  them  to  derive  the  same  benefit 
which  he  himself  does."  Turners.  Winter,  1  T.  R.  602,  607.  See  also 
Savory  v.  Price,  R.  &  M.  1. 

•  Bovill  V.  Moore,  Dav.  Pat.  Cas.  361,  401. 

2  Lewis  V.  Marling,  10  B.  &  Cress.  22. 

^  Per  Sir  N.  Tindal,  C.  J.,  in  Galloway  v.  Bleaden,  Webs.  Pat.  Cas.  523. 


144  LAW     OF     PATENTS. 

invention  of  processes  wliich  the  patentee  has  withheld  from  the 
public.^ 


'  This  doctrine  was  very  clearly  laid  down  by  Alderson,  B.,  in  Morgan  v. 
Seaward,  Webs.  Pat.  Cas.  107,  181.    "  Then  Henry  Mornay,  a  young  gen- 
tleman in  Mr.  Morgan's  employment,  where  he  has  been  apparently  study- 
ing the  construction  of  engines,  speaks  of  a  circumstance  which  does  appear 
to  me  to  be  material.     He  says,  Mr.  Morgan  in  practice  makes  his  rods  of 
different  lengths.     He  must  necessarily  do  so,  in  order  that  the  floats  may 
follow  at  the  same  angle  as  that  at  which  the  driving  float  enters  the  water. 
The  problem  which  Mr.  Park  solved   is  a  problem  applying  to  three  floats 
only  :  but  it  appears  that  the  other  floats  will  not  follow  in  the  same  order, 
unless  some  adjustment  of  the  rods  is  made.     Now,  suppose  it  was  to  be 
desired  that  the  floats  should   all   enter  the  water  at  the  given  or  required 
anale,  if  one  should  go  in  at  one  angle,  and  one  at  another,  the  operation  of 
the  machine  would  not  be  uniform ;    and  the  specification  means  that  the 
party  constructing  a  wheel,  should  be  able  to  make  a  wheel,  the  floats  of 
which  shall  all  enter  at  the  same  angle,  and  all  go  out  at  the  same  angle. 
Now  in  order  in  practice  to  carry  that  into  eflfect,  if  there  are  more  than  three 
floats,  something  more  than  Mr.  Park's  problem  would  be  required  ;  and  Mr, 
Mornay  says  actually,  that  Mr.  Morgan  in  practice  makes  his  rods  of  differ- 
ent lengths,  and  he  must  necessarily  do  that  in  order  that  the  floats  may  fol- 
low at  the  same  angle  as  the  driving  float  enters  the  water.    If  so,  he  should 
have  said  in  his  specification,  '  I  make  my  rods  of  different  lengths,  in  order 
that  the  rest  of  my  floats  may  enter  at  the  same  angle  ;    and  the  way  to  do 
that  is  so  and  so.'     Or  he  might  have  said,  '  it  may  be  determined  so  and 
so.'     But  the  specification  is  totally  silent  on  the  subject;  therefore,  a  per- 
son reading  the  specification  would  never  dream  that  the  other  floats  must  be 
governed  by  rods  of  unequal  length  ;  and  least  of  all  could  he  ascertain  what 
their  lengths  should  be,  until  he  had  made  experiments.   Therefore  it  is  con- 
tended that  the  specification  does  not  state  as  it  should  have  stated,  the  proper 
manner  of  doing  it.     He  says,  if  they  are  made  of  equal  lengths,  though  the 
governing  rod  would  be  vertical  at  the  time  of  entering,  and  three  would  be  so 
when  they  arrived  at  the  same  spot,  by  reason  of  the  operation  Mr.  Park  sug- 
gests, yet  the  fourth  would  not  come  vertical  at  the  proper  point,  nor  would 
the  fifth,  sixth,  or  seventh.     Then  they  would  not  accomplish  that  advan- 
tage which  professes  to  be  acquired.     The  patentee  ought  to  state  in  his 
specification  the  precise  way  of  doing  it.    If  it  cannot  completely  be  done  by 
following   the  specification,  then  a  person  will  not  infringe  the  patent  by 
doing  it.     If  this  were  an  infringement,  it  would  be  an  infringement  to  do 
that  perfectly,  which,  according  to  the  specification,  requires  something  else 
to  be  done  to  make  it  perfect.     If  that  be  correct,  you  would  prevent  a  man 


THE    SPECIFICATION.  145 

>§>  139.  The  ambiguity  produced  by  a  misuse  of  terms,  so  as 
to  render  the  specification  unintelligible,  will  be  as  fatal  as  any 
other  defect.  Thus,  where  the  directions  were  to  use  "  sea-salt, 
or  sal-gem,  or  fossil-salt,  or  any  marine-salt,"  and  it  appeared 
that  "  sal-gem  "  was  the  only  thing  that  could  be  used,  and  that 
"  fossil-salt  "  was  a  generic  term,  including  "  sal-gem,"  as  well 
as  other  species  of  salt,  it  was  held  that  the  use  of  the  term 
"  fossil-salt "  could  only  tend  to  mislead  and  to  create  unneces- 
sary experiments,  and  therefore  that  the  specification  was  in 
that  respect  defective.^  In  like  manner  where  the  specification 
directed  the  use  of  "  the  finest  and  purest  chemical  white-lead," 
and  it  appeared  that  no  such  substance  was  known  in  the  trade 
by  that  name,  but  that  white-lead  only  was  known,  the  specifi- 
cation was  held  defective.-  But  a  mere  mistake  of  one  word 
for  another  in  writing  or  printing,  if  explained  by  other  parts  of 
the  patent  and  specification,  as  the  use  of  the  word  "  painting  " 
for  "  printing,"  is  immaterial.^ 


from  having  a  perfect  engine.  He  says,  practically  speaking,  the  difference 
in  the  length  of  the  rods  would  not  be  very  material,  the  difference  being 
small.  But  the  whole  question  is  small,  therefore  it  ought  to  have  been 
specified  ;  and  if  it  could  not  be  ascertained  fully,  it  should  have  been  so 
stated.  Now  this  is  the  part  to  which  I  was  referring,  when  in  the  prelimi- 
nary observations  I  addressed  to  you,  I  cited  the  case  before  Lord  Mansfield, 
on  the  subject  of  the  introduction  of  tallow  to  enable  the  machine  to  work 
more  smoothly.  There  it  was  held  that  the  use  of  tallow  ought  to  have  been 
stated  in  the  specification.  This  small  adjustment  of  these  different  lengths 
may  have  been  made  for  the  purpose  of  making  the  machine  work  more 
smoothly  ;  if  so,  it  is  just  as  much  necessary  that  it  should  be  so  stated  in 
the  specification,  as  it  was  that  the  tallow  should  be  mentioned.  The  true 
criterion  is  this,  has  the  specification  substantially  complied  with  that  which 
the  public  has  a  right  to  require  ?  Has  the  patentee  communicated  to  the 
public  the  manner  of  carrying  his  invention  into  effect?  If  he  has,  and  if  he 
has  given  to  the  public  all  the  knowledge  he  had  himself,  he  has  done  that 
which  he  ought  to  have  done,  and  which  the  public  has  a  right  to  require 
from  him." 

'  Turners.  Winter,  1  T.  R.  606. 

""  Sturz  V.  De  La  Rue,  Webs.  Pat.  Cas.  83. 

=•  Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9. 
13 


146  LAW    OF    PATENTS. 

<^  140.  The  description  of  an  improvement,  when  an  improve- 
ment is  the  real  subject-matter  of  the  patent,  should  be  made  in 
such  a  manner  as  will  clearly  show  that  the  improvement  only 
is  claimed  by  the  patentee.  If  a  machine  substantially  existed 
before,  and  the  patentee  makes  an  improvement  therein,  his 
patent  should  not  comprehend  the  whole  machine  in  its  improved 
state,  but  should  be  confined  to  his  improvement ;  ^  and  this  is 
true,  although  the  invention  of  the  patentee  consists  of  an  addi- 
tion to  the  old  machine,  by  which  the  same  effects  are  to  be 
produced  in  a  better  manner,  or  some  new  combinations  are 
added,  in  order  to  produce  new  efTects.-  But  if  well-known 
effects  are  produced  by  machinery  which  in  all  its  combinations 
is  entirely  new,  the  subject-matter  will  be  a  new  machine,  and 
of  course  the  patent  will  cover  the  whole  machine.^ 

<§,  141.  If  the  invention  be  an  improvement,  and  be  claimed 
as  such,  but  nothing  is  said  of  any  previous  use,  of  which  the 
use  proposed  is  averred  to  be  an  improvement,  the  patent  may 
incur  the  risk  of  being  construed  as  a  claim  of  entire  and  origi- 
nal discovery.  Hence  arises  the  necessity  for  reciting  what  had 
formerly  been  done,  and  describing  a  different  mode  as  the 
improvement  claimed.^ 


'  Woodcock  V.  Parker,  I  Gallis.  438 ;  Odiorne  v.  Winkley,  2  Gallis.  51  ; 
Barrett  v.  Hall,  1  Mas.  447,  476. 

^  Whittemore  v.  Cutter,  1  Gallis.  478. 

=>  Ibid. 

*  In  Hill  V.  Thompson,  Webs.  Pat.  Cas.  226,  228,  229,  the  specification 
contained  among  other  things  the  following  claim  :  "  And  that  my  said  im- 
provements do  further  consist  in  the  use  and  application  of  lime  to  iron,  subse- 
quently to  the  operations  of  the  blast-furnace,  whereby  that  quality  in  iron 
from  which  the  iron  is  called  "  cold  short,"  howsoever  and  from  whatever 
substance  such  iron  be  obtained,  is  sufficiently  prevented  or  remedied,  and 
by  which  such  iron  is  rendered  more  tough  when  cold."  "  And  I  do  further 
declare,  that]  have  discovered  that  the  addition  of  lime  or  limestone,  or  other 
substances  consisting  chiefly  of  lime,  and  free  or  nearly  free  from  any  ingre- 
dient known  to  be  hurtful  to  the  quality  of  iron,  will  sufficiently  prevent  or 
remedy  that  q\iality  in  iron  from   \vhich  the  iron  is  called  "  cold  short,"  and 


THE    SPECIFICATION.  147 

<§,  142.  But  in  describing  the  improvement  of  a  machine  in 
use  and  well  known,  it  is  not  necessary  to  state  in  detail  the 
structure  of  the  entire  and  improved  machine.     It  is  only  neces- 


will  render  such  iron  more  tough  when  cold;  and  I  do,  for  this  purpose,  if 
the  iron,  howsoever  and  from  whatever  substance  the  sanae  may  have  been 
obtained,  be  expected  to  prove  "  cold  short,"  add  a  portion  of  lime  or  lime- 
stone, or  of  the  other  said  substances,  of  which  the  quantity  must  be  regu- 
lated by  the  quality  of  the  iron  to  be  operated  upon,  and  by  the  quality  of 
the  iron  wished  to  be  produced  ;  and  further,  that  the  said  lime  or  limestone, 
or  other  aforesaid  substances,  may  be  added  to  the  iron  at  any  time  subse- 
quently to  the  reduction  thereof,  in  the  blast  furnace,  and  prior  to  the  iron 
becoming  clotted,  or  coming  into  nature,  whether  the  same  be  added  to  the 
iron  while  it  is  in  the  refining  or  in  the  puddling  furnace,  or  in  both  of  them, 
or  previous  to  the  said  iron  being  put  into  either  of  the  said  furnaces."  It 
appeared  that  "  cold  short"  had  been  prevented  by  the  use  of  lime  before  ; 
and  Dallas,  J.  said,  "  The  purpose  is  to  render  bar  iron  more  tough,  by  pre- 
venting that  brittleness  which  is  called  "cold  short,"  and  which  renders 
bar  iron  less  valuable  ;  the  means  of  prevention  stated,  are  the  application 
of  lime.  In  what  way,  then,  is  lime  mentioned  in  the  patent?  The  first 
part  of  the  specification,  in  terms,  alleges  certain  improvements  in  the  smelt- 
ing and  working  of  iron,  during  the  operations  of  the  blast  furnace ;  and 
then,  introducing  the  mention  of  lime,  it  states,  that  the  application  of  it  to 
iron,  subsequently  to  the  operation  of  the  blast  furnace,  will  prevent  the 
quality  called  "  cold  short." 

So  far,  therefore,  the  application  of  lime  is,  in  terms  claimed  as  an  im- 
provement, and  nothing  is  said  of  any  previous  use,  of  which  the  use  pro- 
posed is  averred  to  be  an  improvement ;  it  is,  therefore,  in  substance,  a  claim 
of  entire  and  original  discovery.  The  recital  should  have  stated,  supposing 
a  previous  use  to  be  proved  in  the  case,  that,  "  whereas  lime  has  been  in 
part,  but  improperly,  made  use  of,  &c.  and  then  a  different  mode  of  applica- 
tion and  use  should  have  been  suggested  as  the  improvement  claimed.  But 
the  whole  of  the  patent  must  be  taken  together,  and  this  objection  will  ap- 
pear to  be  stronger  as  we  proceed.  And  here  again,  looking  through  the 
patent,  in  a  subsequent  part  of  the  specification,  the  word  "  discovery  "  first 
occurs,  and  I  will  state  the  terms  made  use  of  in  this  respect.  "  And  I  do 
further  declare,  that  I  have  discovered  that  the  addition  of  lime  will  prevent 
that  quality  in  iron  from  which  the  iron  is  called  "  cold  short,"  and  will  ren- 
der such  iron  more  tough  when  cold  ;  and  that  for  this  purpose,  I  do  add  a 
a  portion  of  lime  or  Umestone,  to  be  regulated  by  the  quantity  of  iron  to  be 
operated  upon,  and  by  the  quality  of  the  iron  to  be  produced,  to  be  added  at 
any  time  subsequently  to  the  reduction  in  the  blast  furnace,  and  this  from 


148  LAW    OF    PATENTS. 

sary  to  describe  the  improvement,  by  showing  the  parts  of  which 
it  consists,  and  the  effects  which  it  produces.^  In  the  case  of 
machinery  there  is  a  particular  requisition  in  the  statute, 
designed  to  ensure  fuhiess  and  clearness  in  the  specification. 
"  And  in  case  of  any  machine,  he  (the  patentee)  shall  fully 
explain  the  principle  and  the  several  modes  in  which  he  has 
contemplated  the  apphcation  of  that  principle  or  character  by 
which  it  may  be  distinguished  from  other  inventions  ;  and  shall 
particularly  specify  and  point  out  the  part,  improvement,  or 
combination,  which  he  claims  as  his  own  invention  or  discovery.^ 
By  the  principle  of  a  machine,  as  used  in  this  clause  of  the  stat- 
ute, is  to  be  understood  the  peculiar  structure  and  mode  of  ope- 
ration of  such  machine  ;  ^  or,  as  the  statute  itself  explains  it,  the 
character  by  which  it  may  be  distinguished  from  other  inven- 
tions. By  explaining  "  the  several  modes  in  which  he  has  con- 
templated the  application  of  that  principle,"  the  statute  is  pre- 
sumed to  direct  the  patentee  to  point  out  all  the  modes  of  apply- 
ing the  principle,  which  he  claims  to  be  his  own  invention,  and 
which  he  means  to  have  covered  by  his  patent,  whether  they  are 
those  which  he  deems  the  best,  or  are  mere  formal  variations 
from  the  modes  which  he  prefers.  In  other  words,  he  is  to  state 
not  only  the  peculiar  device  or  construction  which  he  deems  the 
best  for  producing  the  new  effect  exhibited  in  his  machine,  but 
also  all  the  other  modes  of  producing  the  same  effect,  which  he 


whatever  substance  the  iron  may  be  produced,  if  expected  to  prove  "  cold 
short."  Now  this  appears  to  be  nothing  short  of  a  claim  of  discovery,  in 
the  most  extensive  sense,  of  the  effect  of  lime  applied  to  iron  to  prevent 
brittleness,  not  qualified  and  restrained  by  what  follows,  as  to  the  preferable 
mode  of  applying  it  under  various  circumstances,  and,  therefore,  rendering 
the  patent  void,  if  lime  had  been  made  use  of  for  this  purpose  before,  sub- 
ject to  the  qualification  only  of  applying  it  subsequently  to  the  operations  in 
the  blast  furnace." 

'  Brooks  V.  Bicknell,  3  M'Lean's  R.  250,  261. 

*  Act  of  July  4,  1836,  ^6. 

^  Whittemore  v.  Cutter,  1  Gallis.  478,  480 ;  Barrett  v  Hall,  1  Mas.  447, 
470. 


THE    SPECIFICATION.  149 

means  to  claim  as  being  substantially  applications  of  the  same 
principle.  But  in  doing  this,  it  is  not,  as  we  have  seen,  neces- 
sary for  him  to  enter  into  a  minute  description  of  the  mode 
of  producing  those  variations  of  structure  which  he  thus  claims, 
in  addition  to  the  structure  which  he  prefers.  It  is  sufficient, 
if  he  indicates  what  variations  of  the  application  of  the  prin- 
ciple he  claims  beyond  those  which  he  deems  the  best.^ 

<§>  143.  The  duty  of  determining  what  the  claim  of  the 
patentee  is  involves  the  necessity  of  determining  whether  the 
description  in  the  specification  discloses  a  patentable  subject. 
The  real  invention  may  be  a  patentable  subject  ;  but  at  the 
same  time  it  may  be  claimed  in  such  a  way  as  to  appear  to  be  a 
mere  function,  or  abstract  principle,  which  it  will  be  the  duty  of 
the  Court  to  declare  is  not  patentable  ;  whereas,  if  it  had  been 
described  diflerently,  it  would  have  been  seen  to  be  a  claim  for 
a  principle  or  function  embodied  in  a  particular  organization  of 
matter  for  a  particular  purpose,  which  is  patentable.  The 
patentee  may  have  been  engaged  in  investigations  into  the  prin- 
ciples of  science  or  the  laws  of  nature.  He  may  have  attained 
a  result,  which  constitutes  a  most  important  and  valuable  dis- 
covery, and  he  may  desire  to  protect  that  discovery  by  a  patent ; 
but  he  cannot  do  so  by  merely  stating  his  discovery  in  a  specifi- 
cation. He  must  give  it  a  practical  application  to  some  useful 
purpose,  to  attain  a  result  in  arts  or  manufactures  not  before 
attained,  and  his  specification  must  show  the  application  of  the 
principle  to  such  a  special  purpose,  by  its  incorporation  with 
matter  in  such  a  way  as  to  be  in  a  condition  to  produce  a  prac- 
tical result.^     Care  should  be  taken,  therefore,  in  drawing  spe- 


'  See  the  observations  of  Mr.  Justice  Story,  cited  ante,  from  the  case  of 
Carver  v.  The  Braintree  Manuf.  Company,  2  Story's  R.  432,  440. 

«  In  the  Househill  Company  v.  Neilson,  Webs.  Pat.  Cas.  673,  683,  Lord 
Justice  Clerk  Hope,  in  the  Court  of  Sessions,  made  the  following  clear  obser- 
vations to  the  jury  :  "  It  is  quite  true  that  a  patent  cannot  be  taken  out 
solely  for  an  abstract  philosophical  principle  —  for  instance,  for  any  law  of 
13* 


150  LAW    OF    PATENTS. 

cifications,  not  to  describe  the  invention  as  a  mode  or  device  for 
producing  an  effect,  detached  from  machinery,  or  from  the  par- 
ticular combination  or  use  of  matter,  by  which  the  effect  is  pro- 
duced.^ The  danger  in  such  cases  is,  that  the  claim  will  appear 
to  be  a  claim  for  an  abstract  principle,  or  for  all  possible  modes 

nature,  or  any  property  of  matter,  apart  from  any  mode  of  turning  it  to  ac- 
count in  the  practical  operations  of  manufacture,  or  the  business,  and  arts, 
and  utilities  of  life.  The  mere  discovery  of  such  a  principle  is  not  an  inven- 
tion, in  the  patent  law  sense  of  the  term.  Stating  such  a  principle  in  a 
patent  may  be  a  prolongation  of  the  principle,  but  it  is  no  application  of  the 
principle  to  any  practical  purpose.  And  without  that  application  of  the 
principle  to  a  practical  object  and  end,  and  without  the  application  of  it  to 
human  industry,  or  to  the  purposes  of  human  enjoyment,  a  person  cannot  in 
the  abstract  appropriate  a  principle  to  himself.  But  a  patent  will  be  good, 
though  the  subject  of  the  patent  consists  in  the  discovery  of  a  great,  general, 
and  most  comprehensive  principle  in  science  or  law  of  nature,  if  that  princi- 
ple is  by  the  specification  applied  to  any  special  purpose,  so  as  thereby  to 
effectuate  a  practical  result  and  benefit  not  previously  attained. 

The  main  merit,  the  most  important  part  of  the  invention,  may  consist  in 
the  conception  of  the  original  idea — in  the  discovery  of  the  principle  in 
science,  or  of  the  law  of  nature,  stated  in  the  patent,  and  little  or  no  pains 
may  have  been  taken  in  working  out  the  best  manner  and  mode  of  the  ap- 
plication of  the  principle  to  the  purpose  set  forth  in  the  patent.  But  still, 
if  the  principle  is  stated  to  be  applicable  to  any  special  purpose,  so  as  to 
produce  any  result  previously  unknown,  in  the  way  and  for  the  objects  de- 
scribed, the  patent  is  good.  It  is  no  longer  an  abstract  principle.  It  comes 
to  be  a  principle  turned  to  account,  to  a  practical  object,  and  applied  to  a 
special  result.  It  becomes,  then,  not  an  abstract  principle,  which  means  a 
principle  considered  apart  from  any  special  purpose  or  practical  operation, 
but  the  discovery  and  statement  of  a  principle  for  a  special  purpose  ;  that  is, 
a  practical  invention,  a  mode  of  carrying  a  principle  into  effect.  That  such 
is  the  law,  if  a  well  known  principle  is  applied  for  the  first  time  to  produce 
a  practical  result  for  a  special  purpose,  has  never  been  disputed.  It  would 
be  very  strange  and  unjust  to  refuse  the  same  legal  effect,  when  the  inventor 
has  the  additional  merit  of  discovering  the  principle  as  well  as  its  application 
to  a  practical  object.  The  instant  that  the  principle,  although  discovered  for 
the  first  time,  is  stated,  in  actual  application  to,  and  as  the  agent  of,  produc- 
ing a  certain  specified  effect,  it  is  no  longer  an  abstract  principle,  it  is  then 
clothed  with  the  language  of  practical  application,  and  receives  the  impress 
of  tangible  direction  to  the  actual  business  of  human  life." 

'  Barrett  v.  Hall,  1  Mas.  476. 


THE    SPECIFICATION.  151 

of  producing  the  effect  in  question,  instead  of  being,  what  alone 
it  should  be,  a  claim  for  the  particular  application  of  the  princi- 
ple which  the  patentee  professes  to  have  made. 

<§)  144.  This  is  well  illustrated  by  several  cases.  In  one,  the 
invention  claimed,  was  "  the  communication  of  motion  from  the 
r€ed  to  the  yarn-beam,  in  the  connection  of  the  one  with  the 
other,  which  is  produced  as  follows,"  describing  the  mode. 
The  patent  was  sustained,  only  by  construing  it  as  a  claim  for 
the  specific  machinery  invented  by  the  patentee  for  the  commu- 
nication of  motion  from  the  reed  to  the  yarn-beam,  specially 
described  in  the  specification.  As  a  claim  for  all  possible  modes 
of  communicating  the  motion,  &lc.,  it  would  have  been  utterly 
void.^  In  another  case,  a  patent  "  for  an  improvement  in  the 
art  of  making  nails,  by  means  of  a  machine  which  cuts  and 
heads  the  nails  at  one  operation,"  was  seen  at  once  not  to  be  a 
grant  of  an  abstract  principle,  but  of  a  combination  of  mechani- 
cal contrivances  operating  to  produce  a  new  effect,  and  consti- 
tuting an  improvement  in  the  art  of  making  nails.-  So  too. 
where  the  patentee,  in  a  patent  for  a  machine  for  turning  irreg- 
ular forms,  claimed  "  the  method  or  mode  of  operation  in  the 
abstract  explained  in  the  second  article,  whereby  the  infinite 
variety  of  forms,  described  in  general  terms  in  this  article  may 
be  turned  or  wrought,"  and  the  second  article  in  his  specifica- 
tion explained  the  structure  of  a  machine,  by  which  that  mode 
of  operation  was  carried  into  effect,  and  the  mode  of  construct- 
ing such  a  machine  so  as  to  effect'  the  different  objects  to  be 
accomplished,  it  was  held  that  the  specification  did  not  claim  an 
abstract  principle  or  function,  but  a  machine.^     So  also,  it  has 


'  Stone  V.  Sprague,  1  Story's  R.  270. 

2  Gray  v.  James,  Peters's  Circ.  C.  R.  394. 

3  Blanchard  v.  Sprague,  2  Story's  R.  164,  170,  In  this  case,  Mr,  Justice 
Story  said,  "Looking  at  the  present  specification,  and  construing  all  its 
terms  together,  I  am  clearly  of  opinion,  that  it  is  not  a  patent  claimed  for  a 
mere  function  ;  but  it  is  claimed  for  the  machine  specially  described  in  the 
specification  ;  that  is,  for  a  function  as  embodied  in  a  particular  machine, 


152  LAW     OF     PATENTS. 

been  held  that  the  making  of  wheels  on  a  particular  principle 
which  is  described  in  the  specification,  is  the  subject  of  a  patent ;  ^ 
and  where  the  plaintiff  claimed  as  his  invention  "  the  applica- 
tion of  a  self-adjusting  leverage  to  the  back  and  seat  6f  a  chair, 
whereby  the  weight  on  the  seat  acts  as  a  counter-balance  to  the 
pressure  against  the  back  of  such  chair,  as  above  described,"  it 
was  held  not  to  be  a  claim  to  a  principle,  but  to  an  appUcation 
to  a  certain  purpose,  and  by  certain  means.^ 


whose  mode  of  operation  and  general  structure  are  pointed  out.  In  the  close 
of  his  specification,  the  Patentee  explicitly  states  that  his  "  invention  is  de- 
scribed and  explained  in  the  second  article  of  his  specification,  to  which 
reference  is  made  for  information  of  that,  which  constitutes  the  principal  or 
character  of  his  machine  or  invention,  and  distinguishes  it,  as  he  verily  be- 
lieves, from  all  other  machines,  discoveries  or  inventions  known  or  used 
before."  Now,  when  we  turn  to  the  second  article,  we  find  there  described 
not  a  mere  function,  but  a  machine  of  a  particular  structure,  whose  modes  of 
operation  are  pointed  out,  to  accomplish  a  particular  purpose,  function,  or 
end.  This  seems  to  me,  sufficiently  expressive  to  define  and  ascertain  what 
his  invention  is.  It  is  a  particular  machine,  constituted  in  the  way  pointed 
out,  for  the  accomplishment  of  a  particular  end  or  object.  The  patent  is  for 
a  machine,  and  not  for  a  principle  or  function  detached  from  machinery." 

'  Jones  V,  Pearce,  Webs.  Pat.  Cas.  123. 

^  Minter  v.  Williams,  Webs.  Pat.  Cas.  131.  "  Godson,  in  pursuance  of 
leave  reserved,  moved  for  a  nonsuit,  on  the  ground  that  the  specification  is 
for  a  principle,  the  plaintiff  having  summed  up  the  whole  of  his  patent  in  his 
claim  to  the  principle,  and  not  to  any  particular  means.  Either  the  plaintiff 
claims  a  principle,  or  he  does  not;  to  the  former  he  is  not  entitled  ;  and  as 
to  the  latter,  the  defendant  has  not  used  the  mechanical  means  of  the  plain- 
tiff." [Lord  Lyndhurst,  C.  B.  T  He  says,  "  What  I  claim  as  my  invention  is 
the  application  of  a  self-adjusting  leverage  to  the  back  and  seat  of  a  chair, 
whereby  the  weight  on  the  seat  acts  as  a  counterbalance  to  the  pressure 
against  the  back  of  such  chair,  as  above  described,"  This  is  what  he  claims, 
a  self-adjusting  leverage  acting  in  that  way.  Then  he  points  out  the  par- 
ticular mode  in  which  that  is  effected.  The  question,  therefore,  is,  whether 
you  have  infringed  that  particular  method.]  [Alderso7i,  B.  :  All  the  wit- 
nesses proved  that  there  never  had  been  a  self-adjusting  leverage  in  a  chair 
before.]  That  I  admit,  and  contend  that  this  case  is  nearly  the  same  as 
K.  V.  Cutler,  (1  Stark,  354;  Webs.  Pat.  Cas.  76,  n.)  [Lord  Lyndhurst, 
C.  B.  :  He  says,  "  I  claim  the  application  of  a  self-adjusting  leverage  to  the 
back  and  seat  of  a  chair,"  so  as  to  produce  such  an  effect.]     Yes,  my  lord, 


THE    SPECIFICATION.  153 

<§,  145.  But  on   the  other  hand,  a  claim  to  a  principle,  to  be 
carried  into  effect  by  any  means,  without  describing  an  appUca- 

that  effect  being  nothing  more  than  the  motion  of  a  lever  backwards  and  for- 
wards, producing  such  an  effect.  [Lord  Lyndhurst,  C.  B.  :  It  is  the  appli- 
cation of  a  self-adjusting  leverage  to  the  back  and  seat  of  a  chair,  he  having 
described  what  that  self-adjusting  leverage  was  before.  Any  application  of 
a  self-adjusting  leverage  to  the  back  and  seat  of  a  chair  producing  this  effect, 
that  the  one  acts  as  a  counterbalance  to  the  pressure  against  the  other,  would 
be  an  infringement  of  this  patent,  but  nothing  short  of  that.]  [^Alderson,  B.  : 
The  difference  between  this  chair  and  all  others,  as  it  appeared  in  evidence, 
was  very  well  described  by  Mr.  Brunton  ;  he  says,  this  chair  acts,  (looking 
at  the  one  you  produced,)  this  chair  acts,  but  not  by  a  self-adjusting  leverage. 
By  pressing  on  the  back  the  seat  rises,  and  vice  versa,  by  pressing  on  the 
seat  the  back  rises  ;  that  is  what  he  calls  a  self  adjusting  leverage.  In  the 
other  case,  you  might  sit  forever,  and  the  back  would  never  rise.]  The 
plaintiff,  by  his  specification,  has  appropriated  to  himself  a  first  principle  in 
mechanics,  viz.,  the  lever,  and  therefore  nobody  else  may  use  it.  [Lord 
Lyndhurst,  C.  B.  :  It  is  not  a  leverage  only,  but  the  application  of  a  self- 
adjusting  leverage  ;  and  it  is  not  a  self-adjusting  leverage  only,  but  it  is  a 
self-adjusting  leverage  producing  a  particular  effect,  by  the  means  of  which 
the  weight  on  the  seat  counterbalances  the  pressure  against  the  back.]  This 
is  nothing  more  than  one  of  the  first  principles  of  mechanics.  \Farke,  B,  : 
But  that,  not  being  in  combination  before,  can  that  not  be  patented?  It  is 
only  for  the  application  of  a  self-adjusting  leverage  to  a  chair  —  cannot  he 
patent  that  ?  He  claims  the  combination  of  the  two,  no  matter  in  what 
shapes  or  way  you  combine  them;  but  if  you  combine  the  self-adjusting 
leverage,  which  he  thus  applies  to  the  subject  of  a  chair,  that  is  an  infringe- 
ment of  his  patent.]  What  is  the  combination?  [Lord  Lyndhurst,  C.  B. : 
Why  the  application  of  a  self-adjusting  leverage  producing  a  particular  effect. 
He  says,  I  do  not  confine  myself  to  the  particular  shape  of  this  lever.] 
If  your  lordships  translate  this  to  mean  machine,  of  course  I  have  no  further 
argument  to  urge.  [Lord  Lyndhurst,  C.  B.  :  It  is  every  machine  consisting 
of  a  self-adjusting  leverage  producing  that  particular  effect  in  a  chair.] 
That  is  the  extent  to  which  I  am  putting  it.  If  your  lordships  say  you  can, 
in  favor  of  the  patentee,  so  read  it,  that  it  is  the  machine  and  the  combina- 
tion only  that  the  plaintiff  has  claimed,  then  I  should  be  wasting  your  lord- 
ships' time  if  I  argued  the  matter  further.  [Lord  Lyndhurst,  C.  B.  :  Sub- 
stantially that  combination.]  [Parke,  B.  :  Therefore  a  chair  made  upon 
that  principle  which  you  have  directed  to  be  constructed  here,  would  be  an 
infringement  of  his  patent,  that  is,  the  application  of  a  self-adjusting  leverage 
to  a  chair,  such  a  one  as  you  have  produced  here  to-day.]  [Lord  Lyndhurst, 
C.  B.  :  It  has  the  particular  effect.]     Rule  refused. 


154  LAW    OF     PATENTS. 

tion  of  the  principle  by  some  means,  is  a  claim  to  the  abstract 
principle.  As,  where  a  specification  stated  that  "  It  is  claimed 
as  new,  to  cut  ice  of  a  uniform  size  by  means  of  an  apparatus 
worked  by  any  other  power  than  human,"  it  was  held  that  this 
claim  to  the  art  of  cutting  ice  by  means  of  any  other  power 
than  human  was  utterly  void.^  It  is,  therefore,  essential  that 
the  specification  should  describe  some  practical  mode  of  carry- 
ing the  principle  into  eflfect ;  and  then  the  subject-matter  will 
be  patentable,  because  it  will  be,  not  the  principle  itself,  but  the 
mode  of  carrying  it  into  eflfect ;  and  on  the  question  of  infringe- 
ment it  will  be  for  the  jury  to  say,  whether  another  mode  of 
carrying  it  into  eflfect  is  not  a  colorable  imitation  of  the  mode 
invented  by  the  patentee.^ 

<§.  146.  This  being  the  case,  the  question  next  arises  whether 
it  is  necessary,  after  having  described  the  application  of  the 
principle  by  some  mechanical  contrivance,  or  other  arrange- 
ment of  matter,  to  claim  in  the  specification  all  the  other  forms 
of  apparatus,  or  modifications  of  matter,  by  which  the  princi- 
ple may  also  be  applied  in  order  to  produce  the  same  beneficial 

1  Wyeth  V.  Stone,  1  Story's  R.  271,  285. 

*  In  Neilson  v.  Harford,  Webs.  Pat.  Cas.  342.  Alderson,  B.  said,  "  I 
take  the  distinction  between  a  patent  for  a  principle,  and  a  patent  which  can 
be  supported,  is,  that  you  must  have  an  embodiment  of  the  principle  in  some 
practical  mode  described  in  the  specification  of  carrying  the  principle  into 
actual  effect,  and  then  you  take  out  your  patent,  not  for  the  principle,  but  for 
the  mode  of  carrying  the  principle  into  effect.  In  Watt's  patent,  which 
comes  the  nearest  to  the  present  of  any  you  can  suggest,  the  real  invention 
of  Watt  was,  that  he  discovered  that  by  condensing  steam  in  a  separate 
vessel  a  great  saving  of  fuel  would  be  effected  by  keeping  the  steam  cylinder 
as  hot  as  possible,  and  applying  the  cooling  process  to  the  separate  vessel, 
and  keeping  it  as  cool  as  possible,  whereas,  before,  the  steam  was  condensed 
in  the  same  vessel ;  but,  then,  Mr.  Watt  carried  that  practically  into  effect, 
by  describing  a  mode  which  would  effect  the  object.  The  difficulty  which 
presses  on  my  mind  here  is,  that  this  party  has  taken  out  a  patent,  in  sub- 
stance like  Watt's,  for  a  principle,  that  is,  the  application  of  hot  air  to  fur- 
naces, but  he  has  not  practically  described  any  mode  of  carrying  it  into 
effect.  If  he  had,  perhaps  he  might  have  covered  all  other  modes,  as  being 
a  variation." 


THE    SPECIFICATION.  155 

effect,  or  whether  the  patent  does  not  cover  all  these,  without 
particular  description,  by  covering  the  application  of  the  princi- 
ple. When  we  considei  that  the  subject-matter  of  such  a 
patent  is  the  application  of  the  principle  effected  by  means  of 
some  machinery,  or  other  arrangement,  it  will  be  apparent  that 
the  reason  why  the  patentee  is  bound  to  describe  some  ma- 
chinery or  practical  method  of  making  the  application,  is  in 
order  to  show  that  he  has  actually  applied  the  principle,  and  to 
enable  others  to  do  so  after  him.  But  the  real  subject  of  the 
patent  is  the  practical  application  of  the  principle ;  and  hence, 
although  the  means  by  which  the  patentee  has  made  that  appli- 
cation must  be  described,  in  order  to  show  that  he"-  has  done 
what  he  says  he  has  done,  and  to  enable  others  to  do  what  he 
says  can  be  done,  yet  a  variation  of  the  means  and  machinery, 
if  it  produces  the  same  beneficial  effect,  that  is,  is  the  same 
application  of  the  same  principle,  does  not  show  that  the  party 
making  such  variation  has  not  infringed  the  patent,  by  making 
use  of  that  which  exclusively  belonged  to  another,  viz.,  the 
application  of  the  principle  to  produce  a  particular  effect. 

<§»  147.  Examples  will  best  illustrate  this  distinction.  Min- 
ter's  patent,  for  a  self-adjusting  chair,  which  has  been  already 
referred  to,  was  a  case  of  the  application  of  a  well  known  prin- 
ciple, that  of  the  lever,  for  the  first  time  applied  to  a  chair. 
He  made  no  particular  claim  of  shape  or  form  for  the  construc- 
tion of  the  chair,  but  showed  that  if  a  lever  was  applied  to  the 
back  of  the  chair,  so  that  the  weight  of  the  seat  would  act  as  a 
counterpoise  to  the  back,  in  whatever  posture  the  occupant 
might  be  sitting  or  reclining,  a  self-adjusting  chair  would  be 
obtained.  Now,  there  might  be  various  modes  of  constructing 
a  chair  on  this  principle  ;  but  as  the  constructing  of  chairs  on 
this  principle  was  the  true  subject  of  the  patent,  the  court  held 
the  making  of  any  chair  upon  the  same  principle  of  a  self- 
adjusting  leverage,  was  an  infringement.^ 

1  Minter  v.  Wells,  Webs.  Pat.  Cas.  134. 


\     . 


156  l-AW    OF    PATENTS. 

<§,  148.  Neilson's  patent  involved  the  principle  of  blowing 
furnaces,  for  the  smelting  of  iron,  with  a  blast  of  hot  air,  instead 
of  cold,  and  he  applied  that  principle  by  finding  out  a  mode  by 
which  air  may  be  introduced  in  a  heated  state  into  the  furnace, 
viz.,  by  heating  the  air  in  a  close  vessel  between  the  blowing 
apparatus  and  the  furnace.  The  specification,  after  stating 
that  the  air,  heated  up  to  red  heat,  may  be  used,  but  that  it 
is  not  necessary  to  go  so  far  to  produce  a  beneficial  eflfectj 
proceeded  to  state  that  the  size  of  the  receptacle  would  depend 
on  the  blast  necessary  for  the  furnace,  and  gave  directions  as  to 
that.  It  then  added,  "  The  shape  of  the  receptacle  is  imma- 
terial to  the  effect,  and  may  be  adapted  to  local  circumstances." 
After  great  consideration,  it  was  held  that  the  word  "  effect " 
was  not  meant  to  apply  to  the  degree  of  heat  to  be  given  to 
the  air  in  the  heating  receptacle,  but  that  any  shape  of  the 
heating  receptacle  would  produce  the  beneficial  effect  of  passing 
heated  air  into  the  furnace.  This  construction  settled  what  the 
patent  was  for,  viz.,  the  application  of  the  principle  of  blowing 
with  hot  air,  by  means  of  a  vessel  in  which  the  air  should  be 
heated  on  its  passage  from  the  blowing  apparatus  to  the  furnace. 
Consequently  the  subject-matter  embraced  all  the  forms  of 
apparatus  by  which  the  application  of  the  same  principle  could 
be  effected.^ 


*  Neilson  v.  Harford,  Webs.  Pat.  Cas.  295,  369.  The  same  patent  was 
litigated  in  Scotland,  and,  upon  the  point  of  the  generality  of  the  claim,  as 
regards  the  forms  of  the  apparatus.  Lord  Justice  Clerk  Hope  made  the  fol- 
lowing observations  to  the  jury:  "Is  it  any  objection,  then,  in  the  next 
place,  to  such  a  patent,  that  terms  descriptive  of  the  application  to  a  certain 
speciOed  result  include  every  mode  of  applying  the  principle  or  agent  so  as 
to  produce  that  specified  result,  although  one  mode  may  not  be  described  more 
than  another  —  although  one  mode  may  be  infinitely  better  than  another  — 
although  much  greater  benefit  \vould  result  from  the  application  of  the  prin- 
ciple by  one  method  than  by  another  —  although  one  method  may  be  less 
expensive  than  another  1  Is  it,  I  next  inquire,  an  objection  to  the  patent, 
that,  in  its  application  of  a  new  principle  to  a  certain  specified  result,  it 
includes  every  variety  of  mode  of  applying  the  principle  according  to  the 
general  statement  of  the  object  and  benefit  to  be  attained]  You  will  observe, 


THE    SPECIFICATION.  157 

<§.  149.  In  this  case,  it  was  also  Iznd  down  by  Parke,  B.  to 
the  jury,  that  the  omission  to  mention   in  the  specification  any 

that  the  greater  part  of  the  defenders'  case  is  truly  directed  to  this  objection. 
This  is  a  question  of  law,  and  I  must  tell  you  distinctly,  that  this  generality 
of  clainti,  that  is,  for  all  modes  of  applying  the  principle  to  the  purpose  speci- 
fied, according  to  or  within  a  general  statement  of  the  object  to  be  attained, 
and  of  the  use  to  be  made  of  the  agent  to  be  so  applied,  is  no  objection  what- 
ever to  the  patent.  That  the  application  or  use  of  the  agent  for  the  purpose 
specified,  may  be  carried  out  in  a  great  variety  of  ways,  only  shows  the 
beauty,  and  simplicity,  and  comprehensiveness  of  the  invention.  But  the 
scientific  and  general  utility  of  the  proposed  application  of  the  principle,  if 
directed  to  a  specified  purpose,  is  not  an  objection  to  its  becoming  the  sub- 
ject of  a  patent.  That  the  proposed  applications  may  be  very  generally 
adopted  in  a  great  variety  of  ways,  is  the  merit  of  the  invention,  not  a  legal 
objection  to  the  patent. 

The  defenders  say  —  you  announce  a  principle,  that  hot  air  will  produce 
heat  in  the  furnace ;  you  direct  us  to  take  the  blast  without  interrupting,  or 
rather  without  stopping  it,  to  take  the  current  in  blast,  to  heat  it  after  it 
leaves  the  blast,  and  to  throw  it  hot  into  the  furnace.  But  you  tell  us  no 
more  —  you  do  not  tell  us  how  we  are  to  heat  it.  You  say  you  may  heat  in 
any  way,  in  any  sort  of  form  of  vessel.  You  say,  I  leave  you  to  do  it  how 
you  best  can.  But  my  application  of  the  discovered  principle  is,  that  if 
you  heat  the  air,  and  heat  it  after  it  leaves  the  blowing  engine  (for  it  is  plain 
you  cannot  do  it  before,)  you  attain  the  result  I  state  ;  that  is  the  purpose  to 
which  I  apply  the  principle.  The  benefit  will  be  greater  or  less,  I  only  say, 
benefit  you  will  get,  I  have  disclosed  the  principle  ;  I  so  apply  it  to  a  speci- 
fied purpose  by  a  mechanical  contrivance,  viz.,  by  getting  the  heat  when  in 
blast,  after  it  leaves  the  furnace ;  but  the  mode  and  manner,  and  extent  of 
heating,  I  leave  to  you,  and  the  degree  of  benefit,  on  that  very  account,  I  do 
not  state.  The  defenders  say,  the  patent,  on  this  account,  is  bad  in  law. 
I  must  tell  you,  that  taking  the  patent  to  be  of  this  general  character,  it  is 
good  in  law.  I  stale  to  you  the  law  to  be,  that  you  may  obtain  a  patent  for 
a  mode  of  carrying  a  principle  into  effect ;  and  if  you  suggest  and  discover, 
not  only  the  principle,  but  suggest  and  invent  how  it  may  be  applied  to  a 
practical  result  by  mechanical  contrivance  and  apparatus,  and  show  that  you 
are  aware  that  no  particular  sort  or  modification,  or  form  of  the  apparatus, 
is  essential,  in  order  to  obtain  benefit  from  the  principle,  then  you  may  take 
your  patent  for  the  mode  of  carrying  it  into  effect,  and  you  are  not  under 
the  necessity  of  describing  and  confining  yourself  to  one  form  of  apparatus. 
If  that  were  necessary,  you  see,  what  would  be  the  result?  Why,  that  a 
patent  could  hardly  ever  be  obtained  for  any  mode  of  carrying  a  newly-dis- 
covered principle  into  practical  results,  though  the  most  valuable  of  all 
14 


J  58  LAW     OF    PATENTS. 

thing  which  the  patentee  hnows  to  be  necessary  for  the  benefi- 
cial enjoyment  of  the  invention  is  a  fatal  defect ;  but  the  omis- 
sion to  mention  something  which  contributes  only  to  the  degree 

discoveries.  For  tiie  best  form  and  shape  or  modification  of  apparatus, 
cannot  in  matters  of  such  vast  range,  and  requiring  observation  on  such  a 
great  scale,  be  attained  at  once  ;  and  so  the  thing  would  become  known,  and 
so  the  right  lost,  long  before  all  the  various  kinds  of  apparatus  could  be 
tried.  Hence  you  may  generally  claim  the  mode  of  carrying  the  principle 
into  effect  by  mechanical  contrivance,  so  that  any  sort  of  apparatus  applied 
in  the  way  stated  will,  more  or  less,  produce  the  benefit,  and  you  are  not 
tied  down  to  any  form. 

The  best  illustration  I  can  give  you,  and  I  think  it  right  to  give  you  this 
illustration,  is  from  a  case  as  to  the  application  of  that  familiar  principle, 
the  lever  to  the   construction  of  chairs,  or  what  is  called  the  self-adjusting 
lever.     (Minter's   Patent,  Webs.    Pat.   Cas.    126  and    134.)      This   case, 
which  afterwards  came  under  the  consideration  of  the  whole  court,  was 
tried  in  the  Court  of  Exchequer  during  the  presidency  of  Lord  Lyndhurst. 
The  case  was  as  to  the  patent  reclining  chair,  the  luxury  of  which  some  of 
you  may  have  tried  ;  it  had  a  self-adjusting  lever,  so  that  a  person  sitting  or 
reclining,  and  I  need  not  tell  you  what  variety  of  postures  can  be  assumed 
by  a  person  reclining  in  a  chair  —  in  whatever  situation  he  placed  his  back, 
there  was  sufficient  resistance  offered  through  means  of  the  lever,  to  pre- 
serve the  equilibrium.     Now  anything  more  general  than  that  I  cannot  con- 
ceive ;  it  was  the  application  of  a   well-known  principle,  but  for  the  first 
time  applied  to  a  chair.     He  made  no  claim  to  any  particular  parts  of  the 
chair,  nor  did  he  prescribe  any  precise  mode  in  which  they  should  be  made  ; 
but  what  he  claimed  was  a  self-adjusting  lever  to  be  applied  to  the  back  of  a 
chair,  where  the  weight  of  the  seat  acts  as  a  counterpoise  to  the  back,  in 
whatever  posture  the  party  might  be  sitting  or  reclining.     Nothing  could  be 
more  general.     Well,  a  verdict  passed  for  the  patentee,  with  liberty  to  have 
it  set  aside  ;  but  Lord   Lyndhurst  and  the  rest  of  the  court  held,  that  this 
was  not  a  claim  to  a  principle,  but  to  the  construction  of  a  chair  on  this  prin- 
ciple, in  whatever  shape  or  form  it  may  be  constructed.     (Minter  v.  Wells. 
Webs.  Pat.  Cas.  134.)     Just  so  as  to  the  hot  blast,  only  the  principle  is  also 
new.     The  patentee  says,  "I  find  hot  air  will  increase  the  heat  in  the  fur- 
nace, that  a  blast  of  hot  air  is  beneficial  for  that  end."     Here  is  the  way  to 
attain  it  —  "  heat  the  air  under  blast,  between  the  blowing  apparatus  and  the 
furnace  ;  if  you  do  that,  I  care  not  how  you  may  propose  to  do  it —  I  neither 
propose  to  you,  nor  claim,  any  special  mode  of  doing  it;  you  may  give  the 
air  more  or  less  degrees  of  heat;  but  if  you  so  heat  it,  you  will  get  by  that 
contrivance  the  benefit  I  have  invented  and  disclosed,  more  or  less,  according 
to  the  degree  of  heat."     This  is  very  simple,  very  general:  but  its  sim- 


THE     SPECIFICATION.  159 

of  benefit,  provided  the  apparatus  would  work  beneficially  and 
be  worth  adopting,  is  not  a  fatal  defect.^ 

"§.  150.  As  it  is  the  duty  of  the  court  to  determine  on  the 
construction  of  the  patent,  what  the  subject-matter  is,  it  is  often 
necessary  to  decide  whether  the  patentee  claims  a  combination 
of  several  things,  or  the  distinct  invention  of  several  things, 
or  both.  General  principles  cannot  be  laid  down  for  the 
determination  of  questions  of  this  kind,  depending  exclusively 
on  the  particular  facts.  There  is,  however,  one  circumstance, 
that  will  always  be  decisive,  in  construing  a  patent,  against 
a  claim  for  the  several  things  described  in  the  specifica- 
tion, and  that  is,  that  one  or  more  of  them  is  not  new.  If  this 
turns  out  to  be  the  case,  the  question  may  then  be,  whether  the 
patent  can  be  sustained  for  the  combination.^  In  determining 
this  question  it  is  to  be  observed  that  a  patent  for  a  combination 
of  three  things  cannot  at  the  same  time  be  a  patent  for  a  com- 
bination of  any  two  of  them.  If  the  subject-matter  is  the  com- 
bination of  any  given  number  of  things,  or  processes,  or  parts, 
no  portion  of  the  combination  less  than  the  whole  can  be  con- 
sidered at  the  same  time  as  being  also  the  subject-matter.^ 

<§.  151.  The  rule  which  we  have  thus  endeavored  to  illustrate, 
which  requires  the  patentee  so  to  describe  his  invention  as  to 
enable  the  public  to  know  what  his  claim  is,  of  course  imposes 
upon  him  the  duty  of  not  misleading  the  public,  either  by  con- 
cealing anything  material  to  the  invention,  or  by  adding  any- 


plicity  is  its  beauty  and  its.  practical  value  —  not  an  objection  in  law."  The 
Househill  Company  v.  Neilson,  Webs.  Pat.  Cas.  684,  686. 

'  Neilson  v.  Harford,  Webs.  Pat.  Cas.  317. 

"  For  some  of  the  cases  where  the  question  has  been  between  a  com- 
bination or  a  claim  for  several  distinct  things,  see  Howe  v.  Abbott,  2  Story's 
R.  190;  Ames  v.  Howard,  1  Sumner,  482  ;  Prouty  v.  Ruggles,  16  Peters, 
336  ;  S.  C.  Prouty  v.  Draper,  1  Story,  568  ;  Pitts  v.  Whitman,  2  Story's 
R.  609  ;  Carver  v.  Braintree  Manuf.  Company,  2  Story's  R.  432. 

"  Prouty  V.  Draper,  1  Story,  568,  572;  S.  C.  Prouty  v.  Ruggles, 
16  Peters,  336. 


160  LAW     OF     PATENTS. 

thing  not  necessary  to  be  introduced.  The  ambiguity  which 
we  have  been  considering  in  the  preceding  pages  may  be  pro- 
duced involuntarily ;  but  there  is  a  special  provision  of  the 
statute  aimed  at  the  voluntary  concealment  or  addition  of  any- 
thing material.  The  statute  enacts  it  as  one  of  the  defences 
to  an  action  on  a  patent,  that  the  specification  "  does  not  con- 
tain the  whole  truth  relative  to  his  invention  or  discovery,  or 
that  it  contains  more  than  is  necessary  to  produce  the  described 
effect ;  which  concealment  or  addition  shall  fully  appear  to  have 
been  made  for  the  purpose  of  deceiving  the  public."  ^  This 
defence  will  be  made  good,  when  it  appears  that  the  patentee 
fraudulently  concealed  something  that  he  knew  to  be  material 
to  the  practice  of  his  invention,  or  fraudulently  added  something 
which  he  knew  was  not  useful,  material,  or  necessary,  at  the 
time  when  he  prepared  his  specification.  If  it  was  subsequently 
discovered  not  to  be  useful,  material,  or  necessary,  his  patent 
will  not  be  afl^ected  by  it.^ 

*§>  152.  II.  The  second  rule  for  preparing  a  specification  is. 
To  describe  the  invention  in  such  a  manner  as  to  enable 
the  public  to  practice  it,  from  the  specification  alone. 

"§)  153.  The  statute  requires  the  patentee  to  describe  "  the 
manner  and  process  of  making,  constructing,  using,  and  com- 
pounding his  invention  or  discovery,  in  such  full,  clear,  and 
exact  terms,  avoiding  unnecessary  prolixity,  as  to  enable  any 
person  skilled  in  the  art  or  science  to  which  it  appertains,  or 
with  which  it  is  most  nearly  connected,  to  make,  construct, 
compound,  and  use  the  same ;  and  in  case  of  any  machine,  he 
shall  fully  explain  the  principle  and  the  several  modes  in  which 
he  has  contemplated  the  application  of  that  principle  or  character 
by  which  it  may  be  distinguished  from  other  inventions ;  and  shall 


'  Act  of  July  4th,  1846,  §  15. 
See  Post,  in  the  chapter  on  Infringement,  and  also  in  the  chapter  on 
Remedy  by  Action. 


THE     SPECIFICATION.  161 

particularly  specify  and  point  out  the  part,  improvement,  or  com- 
bination which  he  claims  as  his  own  invention  or  discovery." 

<§>  154.  We  have  seen  that  the  question  whether  a  specifica- 
tion answers  this  requisite  of  the  statute,  is  a  question  of  fact 
for  the  jury ;  and  although  it  is  not  necessary  that  technical 
terms  should  be  made  use  of  in  a  specification,  they  often  are 
made  use  of  and  often  require  to  be  explained  by  evidence.  In 
judging  of  a  specification,  therefore,  a  distinction  must  be  taken 
between  that  sort  of  ambiguity  which  a  person  unacquainted 
with  technical  terms  would  encounter,  and  the  ambiguity  which 
might  appear  to  a  person  skilled  in  the  particular  art.  It  is  not 
necessary  that  the  specification  should  contain  an  explanation 
level  with  the  capacity  of  every  person,  which  would  often  be 
impossible.^  The  statute  allows  the  patentee  to  address  himself 
to  persons  of  competent  skill  in  the  art,  and  it  requires  him  to 
use  such  full,  clear,  and  exact  terms  as  will  enable  that  class 
of  persons  to  reproduce  the  thing  described  from  the  descrip- 
tion itself.  It  is,  therefore,  important  to  ascertain  what  the  rules 
of  construction  are,  which  define  what  will  constitute  an  ambi- 
guity or  uncertainty  to  artists  and  persons  skilled  in  the  subject. 

<§>  155.  And  first,  with  regard  to  the  persons  whose  judgment 
and  apprehension  are  thus  appealed  to :  they  are  not  those  who 
possess  the  highest  degree  of  skill  or  knowledge  in  the  particu- 
lar art  or  science,  to  which  the  subject-matter  belongs,  nor  are 
they  day-laborers;  they  are  practical  workmen,  or  persons  of 
reasonably  competent  skill  in  the  particular  art,  science,  or 
branch  of  industry.  If  persons  of  the  highest  skill  were  those 
whom  the  law  has  in  contemplation,  the  object  of  a  specifica- 
tion, which  is  to  enable  competent  persons  to  reproduce  the 
thing  patented,  without  making  experiments,  inventions,  or 
additions  of  their  own,  could  not  generally  be  answered. 


2 


'  Per  Story  J.  in  Lowell  u.  Lewis,  1  Mas.  182. 

*  The  King  v.  Arkwright,  Dav.  Pat.   Cas.   106  ;  Webs.  Pat.  Cas.  64. 

14* 


162  LAW     OF     PATENTS. 

^  156.  Secondly,  as  to  the  application  of  their  knowledge 
and  skill,  by  such  persons,  to  the  understanding  and  carrying 
out  of  the  description  given  by  the  patentee.  The  description 
must  be  such  as  will  enable  persons  of  competent  skill  and 
knowledge  to  construct  or  reproduce  the  thing  described,  with- 
out invention  or  addition  of  their  own,  and  without  repeated 
experiments.^  Thus  it  has  been  held,  that  any  material  altera- 
tion to  be  made  in  existing  apparatus  or  machinery,  must  be  stated, 
and  not  left  to  be  supplied  by  the  workman  ;  as,  with  reference 
to  the  materials  employed,  or  their  form,  or  the  speed  of  the 
parts,  or  their  relative  dimensions,  where  these  are  material.^ 
So,  too,  the  specification  is  insufficient,  if  information  must  be 
derived  from  experiments,  or  from  seeing  others  make  the  thing 
described  ;  ^  or  as  it  has  also  been  said,  if  it  requires  the  solu- 

Lovvell  V.  Lewis,  1  Mas.  182;  Harman  d.  Playne,  11  East,  101.  And  see 
particularly  the  observations  of  M.  Baron  Parke,  cited  Post,  from  Neilson  v. 
Harford. 

'  The  King  v.  Arkwright,  Webs.  Pat.  Cas.  66,  67,  69,  70.  It  will  not 
do  to  rely  for  the  correction  of  errors  on  the  ordinary  knowledge  of  compe- 
tent workmen.  In  Neilson  «.  Harford,  the  specification  contained  a  particu- 
lar passage,  which  the  jury  found  to  be  untrue  ;  but  they  also  found  that 
any  workman  of  competent  knowledge  of  the  subject  would  correct  the 
statement.  Parke,  B.,  "Nor  do  we  think  that  the  point  contended  for  by 
Sir  William  Follett,  that  if  a  man  acquainted  well  with  the  process  of  heat- 
ing air  were  employed,  this  misstatement  would  not  mislead  him,  would  at 
all  relieve  the  plaintiffs  from  the  difficulty  ;  for  this  would  be  to  support  the 
specification  by  a  fresh  invention  and  correction  by  a  scientific  person,  and 
no  authority  can  be  found  that  in  such  a  case  a  specification  would  be  good. 
To  be  valid,  we  think  it  should  be  such  as,  if  fairly  followed  out  by  a  com- 
petent workman,  without  invention  or  addition,  would  produce  the  machine 
for  which  the  patent  is  taken  out,  and  that  such  machine  so  constructed 
must  be  one  beneficial  to  the  public."     Webs.  Pat.  Cas.  37. 

*  Jbid.  p.  67. 

'  Ibid.  p.  67,  70,  71.  Upon  this  point,  BuUer  J.  said,  "  Immison  says, 
that  from  the  specification  he  should  have  made  a  parallel  cylinder,  and  not 
a  spiral  one,  but  this  is  the  one  used  by  the  defendant.  As  to  the  rollers, 
it  does  not  appear  from  the  specification  some  were  to  go  faster  than  others  ; 
from  the  specification,  without  other  sources,  it  is  impossible  to  say  how 
they  should  be  made,  as  there  is  no  scale  or  plan  to  work  by.     A  roller  is 


THE    SPECIFICATION.  163 

tion  of  a  problem.^     And,  generally,  a  specification,  to  be  valid, 
must   be  such   as,  when  fairly  followed  out   by  a  competent 


necessary  to  the  feeder  to  give  regular  direction  to  the  work  ;  it  will  not 
answer  without  it.  From  the  knowledge  he  has  now,  he  should  add  a 
roller  if  he  was  directed  to  make  the  machine.  But  that  does  not  prove  the 
specification  to  be  sufficient,  because,  if  a  man,  from  the  knowledge  he  has 
got  from  three  trials,  and  seeing  people  immediately  employed  about  it,  is 
able  to  make  use  of  it,  it  is  his  ideas  improve  the  plan,  and  not  the  merit  of 
the  specification ;  if  he  makes  it  complete,  it  is  his  ingenuity,  and  not  the 
specification  of  the  inventor."  .  .  .  "Upon  the  other  hand,  several 
respectable  people  are  called  upon  the  part  of  the  defendant,  who  say  they 
could  do  it,  but  there  is  this  difference  in  their  description;  most,  if  not 
every  one  of  them,  have  looked  at  and  seen  how  the  machines  were  worked 
by  the  defendant,  and  have  got  their  knowledge  by  other  means,  and  not 
from  the  specification  and  plan  alone;  besides,  they  admit  the  manner  the 
defendant  works  it  is  not  consistent  with  the  plan  laid  down,  particularly  as 
to  the  cylinder,  a  particular  part  of  the  business,  for  Moore  says,  this  upon 
the  face  of  it,  must  be  taken  to  be  a  parallel,  whereas  that  which  plainly 
appears  to  be  used  is  a  spiral ;  besides,  after  all  this  they  have  spoken  most 
of  them  in  a  very  doubtful  way,  particularly  Mr.  Moore,  who  qualified  his 
expression  in  the  way  which  I  have  stated  to  you,  and  the  others  qualify- 
ing their  expressions,,  saying  they  think  upon  the  whole  they  could  do  it. 
Suppose  it  perfectly  clear  they  could  with  the  subsequent  knowledge  they 
had  acquired,  yet,  if  it  be  true  that  sensible  men,  that  know  something  of 
this  particular  business,  and  mechanics  in  general,  cannot  do  it,  it  is  not  so 
described  as  is  sufficient  to  support  this  patent." 

'  In  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  170,  174,  Alderson,  B.  said, 
"If  the  invention  can  only  be  carried  into  effect  by  persons  setting  them- 
selves a  problem  to  solve,  then  they  who  solve  the  problem  become  the 
inventors  of  the  method  of  solving  it,  and  he  who  leaves  persons  to  carry 
out  his  invention  by  means  of  that  application  of  their  understanding,  does 
not  teach  them  in  his  specification  that  which,  in  order  to  entitle  him  to  main- 
tain his  patent,  he  should  teach  them  the  way  of  doing  the  thing,  but  sets 
them  a  problem,  which  being  suggested  to  persons  of  skill,  they  may  be 
able  to  solve.  That  is  not  the  way  in  which  a  specification  ought  to  be 
framed.  It  ought  to  be  framed  so  as  not  to  call  on  a  person  to  have  recourse 
to  more  than  those  ordinary  means  of  knowledge  (not  invention)  which  a 
workman  of  competent  skill  in  his  art  and  trade  may  be  presumed  to  have. 
You  may  call  upon  him  to  exercise  all  the  actual  existing  knowledge  com- 
mon to  the  trade,  but  you  cannot  call  upon  him  to  exercise  anything  more. 
You   have  no  right  to  call  upon  him  to  tax  his  ingenuity  or  invention. 


164  LAW    OF    PATENTS. 

workman,  without  invention  or  addition,  the  object  of  the  patent 
may  be  obtained. "^ 


Those  are  the  criteria  by  which  you  ought  to  be  governed,  and  you  ought  to 
decide  this  question  according  to  those  criteria.  You  are  to  apply  those 
criteria  to  the  case  now  under  consideration,  and  you  should  apply  them 
without  prejudice,  either  one  way  or  the  other,  for  it  is  a  fair  observation  to 
make,  that* both  parties  here  stand,  so  far  as  this  observation  is  concerned, 
on  a  footing  of  perfect  equality.  The  public,  on  the  one  hand,  have  a  right 
to  expect  and  require  that  the  specification  shall  be  fair,  honest,  open,  and 
sufficient ;  and,  on  the  other  hand,  the  patentee  should  not  be  tripped  up  by 
captious  objections,  which  do  not  go  to  the  merits  of  the  specification.  Now, 
applying  those  criteria  to  the  evidence  in  the  cause,  if  you  shall  think  that 
this  invention  has  been  so  specified  that  any  competent  engineer,  having  the 
ordinary  knowledge  which  competent  engineers  possess,  could  carry  it  into 
effect  by  the  application  of  his  skill,  and  the  use  of  his  previous  knowledge, 
without  any  inventions  on  his  part,  and  that  he  could  do  it  in  the  manner 
described  by  the  specification,  and  from  the  information  disclosed  in  the 
specification,  then  the  specification  would  be  sufficient.  If,  on  the  other 
hand,  you  think  that  engineers  of  ordinary  and  competent  skill  would  have 
to  set  themselves  a  problem  to  solve,  and  would  have  to  solve  that  problem 
before  they  could  do  it,  then  the  specification  would  be  bad."  See  also  Gray 
V.  James,  1  Pet.  C.  C.  R.  376. 

'  In  Neilson  v.  Harford,  Webs.  Pat.  Cas.  295,  313,  Parke  B.  instructed 
the  jury  as  follows  :  "Now,  then,  understanding  the  meaning  of  this  specifica- 
tion to  be  the  sense  I  have  given  to  it,  that  he  claims  as  his  invention  a  mode 
of  heating  the  blast  between  the  blowing  apparatus  and  the  furnace,  in  a 
vessel  exposed  to  the  fire,  and  kept  to  a  red  heat,  or  nearly,  (and  which  de- 
scription I  think  sufficient)  of  the  size  of  a  cubic  foot  for  a  smith's  forge,  or 
the  other  size  mentioned,  or  of  any  shape,  these  questions  will  arise  for  your 
decision.  It  is  said  that,  understanding  it  in  that  sense,  the  patent  is  void, 
because  there  are  no  directions  given  for  any  mode  of  constructing  the 
instrument.  But  understanding  the  patent  in  that  sense,  it  seems  to  me, 
that  if  you  should  be  of  opinion  that  a  person  of  competent  skill  (and  I  will 
explain  to  you  what  I  mean  by  that)  would  nevertheless  construct  such  a  vessel 
as  would  be  productive  of  some  useful  and  beneficial  purpose  in  the  working  of 
iron,  that  the  patent  nevertheless  is  good,  though  no  particular  form  of  ves- 
sel is  given.  Then  it  is  to  be  recollected  that  this  claim  is  a  patent  right, 
—  a  right  of  heating  in  any  description  of  vessel ;  and  in  order  to  maintain 
that  right,  it  is  essential  that  the  heating  in  any  description  of  vessel,  either 
the  common  form,  the  smith's  forge,  the  cupola,  or  the  blast  furnace,  that  it 
should  be  beneficial  in  any  shape  you  may  choose  for  all  those  three  pur- 


THE      SPECIFICATION.  165 

«§>  157.  Slight  defects  in  a  specification  will  sometimes  pre- 
vent the  object  of  the  patent  from  being  obtained,  by  any  com- 
petent person  who  may  undertake  to  apply  it,  and  will  therefore 
render  the  patent  void,  because  they  create  a  necessity  for  the 
exercise  of  inventive  power  on  the  part  of  the  person  who  thus 

poses.  Now,  then,  I  think,  therefore,  that  this  is  correctly  described  in  the 
patent;  and  if  any  man  of  common  understanding,  and  ordinary  skill  and 
knowledge  of  the  subject,  and  I  should  say  in  this  case  that  the  subject  is 
the  construction  of  the  blowing  apparatus ;  such  a  person  as  that  is  the  per- 
son you  would  most  naturally  apply  to  in  order  to  make  an  alteration  of  this 
kind  ;  if  you  are  of  opinion  on  the  evidence,  that  such  a  person  as  that,  of 
ordinary  skill  and  knowledge  of  the  subject,  (that  is,  the  construction  of  the 
old  blowing  apparatus,)  would  be  able  to  construct,  according  to  the  specifi- 
cation alone,  such  an  apparatus  as  would  be  an  improvement,  that  is,  would 
be  productive  practically  of  some  beneficial  result,  no  matter  how  great, 
provided  it  is  sufficient  to  make  it  worth  while  (the  expense  being  taken  into 
consideration)  to  adapt  such  an  apparatus  to  the  ordinary  machinery  in 
all  cases  of  forges,  cupolas,  and  furnaces,  where  the  blast  is  used;  in 
that  case,  I  think  the  specification  sufficiently  describes  the  invention,  leaving 
out  the  other  objection  (to  which  I  need  not  any  further  direct  your  atten- 
tion) that  there  is  not  merely  a  defective  statement  in  the  specification,  unless 
those  conditions  were  complied  with,  but  there  is  a  wrong  statement.  But 
leaving  out  the  wrong  statement  for  the  present,  and  supposing  that  it  was 
not  introduced,  then  if,  in  your  opinion,  such  a  person  as  I  have  de- 
scribed—  a  man  of  ordinary  and  competent  skill  —  would  erect  a  machine 
which  would  be  beneficial  in  all  those  cases,  and  be  worth  while  to  erect ; 
in  that  case  it  seems  to  me  that  this  specification  is  good,  and  the  patent,  so 
far  as  relates  to  this  objection,  will  be  good.  It  is  to  be  a  person  only  of 
ordinary  skill  and  ordinary  knowledge.  You  are  not  to  ask  yourselves  the 
question,  whether  persons  of  great  skill  —  a  first-rate  engineer,  or  a  second- 
class  engineer,  as  described  by  Mr.  Farey  —  whether  they  would  do  it ;  be- 
cause generally  those  persons  are  men  of  great  science  and  philosophical 
knowledge,  and  they  would  upon  a  mere  hint  in  the  specification  probably 
invent  a  machine  which  should  answer  the  purpose  extremely  well ;  but  that 
is  not  the  description  of  persons  to  whom  this  specification  may  be  supposed 
to  be  addressed — it  is  supposed  to  be  addressed  to  a  practical  workman, 
who  brings  the  ordinary  degree  of  knowledge  and  the  ordinary  degree  of 
capacity  to  the  subject  ;  and  if  such  a  person  would  construct  an  apparatus 
that  would  answer  some  beneficial  purpose,  whatever  its  shape  was,  accord- 
ing to  the  terms  of  this  specification,  then  I  think  that  this  specification  is 
good,  and  the  patent  may  be  supported  so  far  as  relates  to  that." 


166  LAW     OF     PATENTS. 

undertakes  to  apply  the  description.  As,  the  omitting  to  state 
the  use  of  tallow,  which  the  patentee  employed  for  facilitating 
the  manufacture  of  steel  trusses  ;  ^  or,  in  a  patent  medicine,  sta- 
ting the  ingredients  without  stating  the  proportions.-  If  any- 
thing be  omitted,  which  gives  an  advantageous  operation  to  the 
thing  invented,  it  will  vitiate  the  patent ;  as  the  omission  to 
state  the  use  of  a  material,  aqua-fortis,  which  the  patentee  used 
himself  for  obtaining  the  effect  more  rapidly  ;  ^  for  the  patentee 
is  bound  to  give  the  most  advantageous  mode  known  to  him, 
and  any  circumstance  conducive  to  the  advantageous  operation  ; 
otherwise,  he  does  not  pay  the  price  for  his  monopoly,  because 
he  does  not  give  the  public  the  benefit  of  all  that  he  knows 
himself.** 

>§.  158.  So,  too,  if  a  specification  directs  the  use  of  a  sub- 
stance, which,  as  generally  known,  contains  foreign  matter,  the 
presence  of  which  is  positively  injurious,  and  does  not  show 
any  method  of  removing  that  foreign  matter,  or  refer  to  any 
method  generally  known,  or  state  how  the  substance  in  a  proper 
state  can  be  procured,  the  specification  will  be  defective.^ 


'  Liardet  v.  Johnson,  Webs.  Pat.  Cas.  53. 

^  Ibid,  54,  note. 

'  Wood  V.  Turner,  Webs.  Pat.  Cas.  83. 

*  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  175,  182.  See  the  remarks  of 
Alderson,  B.  cited  ante.  See  also,  The  King  v.  Arkwright,  Webs.  Pat. 
Cas.  66  ;  Walton  v.  Bateman,  Ibid.  622  ;  Turner  v.  Winter,  Ibid,  81,  where 
the  employment  of  cheaper  materials  than  those  mentioned  in  the  specifica- 
tion, or  the  insertion  of  materials  which  would  not  answer,  were  said  to  be 
sufficient  to  avoid  a  patent. 

*  Derosne  v.  Fairie,  Webs.  Pat.  Cas.  154,  162.  In  this  very  instructive 
case,  Lord  Abinger,  C.  B.  said;  "Upon  the  main  point,  however,  that  re- 
specting the  bituminous  schistus,  nothing  that  I  have  heard  has  removed  my 
original  impression,  that  there  was  no  evidence  to  show  that  this  process, 
carried  on  with  bituminous  schistus,  combined  with  any  iron  whatsoever, 
would  answer  at  all.  The  plaintiff  himself  has  declared,  that  in  that  bitu- 
minous schistus,  which  he  himself  furnished,  the  whole  of  the  iron  was  ex- 
tracted ,  and  it  appears,  that  it  was  admitted  by  the  counsel,  that  the  presence 


THE    SPECIFICATION.  167 

<§>  159.  In  like  manner,  a  specification  will  be  defective,  if  an 
article  be  described  by  a  particular  name,  the  patentee  knowing 
that  the  requisite  article  cannot  ordinarily  be  procured  under 
the  name  by  which  it  is  described  in  the  specification,  and  it  be 
not  stated  where  it  may  be  procured  ;  because  the  public  have 
not  that  full  and  precise  information  which  they  have  a  right  to 
require.^     A  specification  will  also  be  defective,  which  states 

of  iron  would  not  only  be  disadvantageous,  but  injurious.  Thus,  then  it  ap- 
pearing by  the  evidence,  that  in  all  the  various  forms  in  which  the  article 
exists  in  this  country,  sulphuret  of  iron  is  found,  and  the  witnesses  not 
describing  any  known  process  by  which  it  can  be  extracted,  it  appears  to  me 
that  the  plaintiff  ought  to  prove  one  of  two  things  —  either  that  the  sulphu- 
ret of  iron  in  bituminous  schistus,  is  not  so  absolutely  detrimfnial  as  to  make 
its  presence  disadvantageous  to  the  process,  (in  which  case,  this  patent 
would  be  good,  or  that  the  process  of  extracting  the  iron  from  it  is  so  sim- 
ple and  well  known,  that  a  man  may  be  able  to  accomplish  it  with  ease.  As 
the  bituminous  schistus  which  was  procured  and  used,  was  exclusively  that 
which  was  furnished  oy  the  plaintiff,  not  in  its  original  state,  but  after  it  had 
undergone  distillation,  and  had  been  made  into  charcoal  in  a  foreign  country, 
and  as  in  that  stage  of  its  preparation,  it  could  not  be  discovered  by  examin- 
ing it,  whether  it  was  made  from  one  substance  or  another,  (the  residuum, 
after  distillation,  of  almost  every  matter,  vegetable  as  well  as  animal,  being 
a  charcoal  mixed  more  or  less  with  other  thmgs,)  then  there  is  only  the 
plaintiff's  statement  to  prove  that  the  substance  which  was  furnished  by  him 
and  used,  was  charcoal  of  bituminous  schistus.  It  appeared,  also,  that  he 
had  declared  to  one  of  the  witnesses,  that  he  had  extracted  all  the  iron  from 
the  substance  so  sent,  and  that  it  also  underwent  another  process.  I  am, 
therefore,  of  opinion,  that  without  considering  whether  or  not  the  patent 
would  be  avoided  by  the  process  requiring  the  use  of  means  to  extract  the 
iron  from  the  biiutninous  schistus,  which  were  kept  secret  by  the  patentee, 
he  has  not  shown  in  this  case,  thai  what  he  has  described  in  the  patent  could 
be  used  as  so  described,  without  injury  to  the  matter  going  through  the  pro- 
cess. Under  all  these  circumstances,  I  think  that  the  plaintiff  ought  to  have 
given  some  evidence  to  show  that  bituminous  schistus,  in  the  state  in  which 
it  is  found  and  known  in  England,  could  be  used  in  this  process  with  advan- 
tage, and  as  he  has  not  done  that,  the  defendants  are  entitled  to  a  nonsuit ; 
but,  at  the  same  time,  as  it  is  alleged  that  the  plaintiff  may  supply  the  defect 
of  proof,  as  to  the  schistus  on  a  new  trial  by  other  evidence,  we  are  desirous 
that  the  patent,  if  a  good  one,  should  not  be  affected  by  our  judgment,  and 
think  it  right  to  direct  a  new  trial  on  the  terms  which  have  been  stated." 
'  Sturz  V.  De  La  Rue,  Webs.  Pat.  Cas.  83. 


168  LAW    OF     PATENTS. 

that  the  manner  in  which  a  power  is  to  be  applied  varies  with 
the  circumstances  in  some  measure,  without  showing  in  what 
the  improvement  consists,  as  distinguished  from  all  former  modes 
of  doing  the  same  thing.^  If  obscure  terms  be  employed  for 
the  sake  of  concealment,  so  as  to  induce  the  belief  that  elabo- 
rate processes  are  necessary,  when  the  simplest  will  succeed,  the 
specification  is  bad  ;  -  and  if  a  patentee  states  that  he  prefers  a 
certain  material,  having  ascertained  that  no  other  will  answer, 
he  misleads  the  public.^ 

<§.  160.  The  rule,  however,  which  forbids  a  patentee  to  leave 
the  public  to  find  out  by  experiment  how  to  apply  his  discovery 
or  invention,  is  subject  to  one  important  limitation.  If,  for  in- 
stance, the  specification  of  a  patent  for  a  composition  of  matter 
is  so  drawn,  that  no  one  can  use  the  invention,  without  first  as- 
certaining by  experiment  the  exact  proportion  of  the  different 
ingredients  required  to  produce  the  intended  result,  the  patent 
will  be  void.  But  it  has  been  determined  by  the  Supreme  Court 
of  the  United  States,  that  if,  in  such  a  specification,  the  pa- 
tentee gives  a  certain  proportion  as  the  general  rule  applicable 
to  the  ordinary  state  of  the  ingredients,  he  may,  without  the 
risk  of  having  his  patent  declared  void  by  the  court,  for  vague- 
ness and  uncertainty,  state  other  and  variable  proportions  as  ex- 
ceptions to  the  rule,  applicable  to  the  varying  states  of  the  in- 
gredients, although  tlie  precise  proportion  adapted  to  a  given 
state  of  the  ingredients,  other  than  the  usual  state,  can  only  be 
ascertained  by  computing  it  from  the  general  rule,  after  the  par- 
ticular state  of  the  ingredients  is  ascertained.  In  such  cases, 
it  is  for  the  jury  to  decide,  on  the  evidence  of  experts,  whether 
the  general  rule  given  is  susceptible  of  application,  and  whether 
it  furnishes  the  means  of  determining  the  proportions  to  be  used. 


'  Sullivan  v.  Redfield,  Paioe's  C.  C.  R.  441,  450,  451. 
"  Savoy  V.  Price,  Webs.  Pat.  Cas.  83. 
'  Cromplon  i;.  Ibbolson,  Ibid.  83. 


THE    SPECIFICATION.  169 

in  the  excepted  cases,  by  the  exercise  of  the  ordinary  knowledge 
and  skill  of  the  workman.^ 


'  Wood  V.  Underhill,  5  How.  S.  C.  R.  1,  3,  4.  The  specification  in  this 
case  was  as  follows  :  "  Be  it  known  that  I,  the  said  James  Wood,  have  in- 
vented a  new  and  useful  improvement  in  the  art  of  manufacturing  bricks  and 
tiles.  The  process  is  as  follows  :  Take  of  common  anthracite  coal,  unburnt, 
such  quantity  as  will  best  suit  the  kind  of  clay  to  be  made  into  brick  or  tile, 
and  mix  the  same,  when  well  pulverized,  with  the  clay  before  (it)  is  moulded  ; 
that  clay  which  requires  the  most  burning,  will  require  the  greatest  propor- 
tion of  coal-dust  ;  the  exact  proportion,  therefore,  cannot  be  specified  ;  but, 
in  geneial,  three-fourths  of  a  bushel  of  coal-dust  to  one  thousand  brick  will 
be  correct.  Some  clay  may  require  one-eighth  more,  and  some  not  exceed- 
ing a  half-bushel.  The  benefits  resulting  from  this  composition,  are  the 
saving  of  fuel,  and  the  more  general  diffusion  of  heat  through  the  kiln,  by 
which  the  contents  are  more  equally  burned.  If  the  heat  is  raised  too  high, 
the  brick  will  swell,  and  be  injured  in  their  form.  If  the  heat  is  too  moder- 
ate, the  coal  dust  will  be  consumed  before  the  desired  effect  is  produced. 
Extremes  are  therefore  to  be  avoided.  I  claim  as  my  invention,  the  using 
of  fine  anthracite  coal,  or  coal  dust,  with  clay,  for  the  purpose  of  making 
brick  and  tile  as  aforesaid,  and  for  that  only,  claim  letters-patent  from  the 
United  States."  Mr.  Ch.  Justice  Taney  delivering  the  judgment  of  the 
court,  said,  "  The  plaintiff  claims  that  he  has  invented  a  new  and  useful  im- 
provement in  the  art  of  manufacturing  bricks  and  tiles  ;  and  states  his  in- 
vention to  consist  in  using  fine  anthracite  coal,  or  coal  dust,  with  clay,  for 
the  purpose  of  making  brick  or  tile  ;  and  for  that  only,  he  claims  a  patent. 
And  the  only  question  presented  by  the  record  is,  whether  his  description  of 
the  relative  proportions  of  coal-dust  an4  clay,  as  given  in  his  specification,  is 
upon  the  face  of  it  too  vague  and  unceitain  to  support  a  patent.  The  degree 
of  certainty  which  the  law  requires  is  set  forth  in  the  act  of  Congress.  The 
specification  must  be  in  such  full,  clear  and  exact  terms,  as  to  enable  any 
one  skilled  in  the  art  to  which  it  appertains,  to  compound  and  use  it  without 
making  any  experiments  of  his  own.  In  patents  for  machines,  the  suflS- 
ciency  of  the  description  must,  in  general,  be  a  question  of  fact  to  be  deter- 
mined by  the  jury.  And  this  must  also  be  the  case  in  compositions  of  mat- 
ter, where  any  of  the  ingredients  mentioned  in  the  specification  do  not 
always  possess  exactly  the  same  properties  in  the  same  degree.  But  when 
the  specification  of  a  new  composition  of  matter  gives  only  the  names  of  the 
substances  which  are  to  be  mixed  together,  without  slating  any  relative  pro- 
portion, undoubtedly,  it  would  be  the  duty  of  the  court  to  declare  the  patent 
to  be  void.  And  the  same  rule  would  prevail  where  it  was  apparent  that  the 
proportions  were  stated  ambiguously  and  vaguely.  For  in  such  cases  it 
15 


170  l-AW    OF     PATENTS. 

.§,  161.  But  although  it  is  necessary  that  a  specification  should 
clearly  and  fully  describe  the  invention,  and  should  give  the 
best  process,  materials,  and  methods,  known  to  the  inventor,  yet 
it  is  not  necessary  for  the  patentee  to  describe  the  mode  of 
making  everything  which  he  uses,  or  detail  known  processes,  or 
explain  the  terms  appropriate  to  the  particular  art,  or  science,  or 


would  be  evident,  on  the  face  of  the  specification,  that  no  one  could  use  the 
invention  without  first  ascertaining  by  experiment,  the  exact  proportion  of 
the  different  ingredients  required  to  produce  the  result  intended  to  be 
obtained.  And  if  the  specification  before  us  was  liable  to  either  of  these 
objections,  the  patent  would  be  void,  and  the  instruction  given  by  the  Circuit" 
Court  undoubtedly  right.  But  we  do  not  think  this  degree  of  vagueness  and 
uncertainty  exists.  The  patentee  gives  a  certain  prqportion  as  a  general 
rule  ;  that  is,  three-fourths  of  a  bushel  of  coal-dust  to  one  thousand  bricks. 
It  is  true,  he  also  states  that  clay  which  requires  the  most  burning,  will 
require  the  greatest  proportion  of  coal-dust;  and  that  some  clay  may  require 
one-eiohth  more  than  the  proportions  given,  and  some  not  more  than  half  a 
bushel  instead  of  three-fourths.  The  two  last  mentioned  proportions  may, 
however,  be  justly  considered  as  exceptions  to  the  rule  he  has  stated  ;  and 
as  applicable  to  those  cases  only  where  the  clay  has  some  peculiarity,  and 
differs  in  quality  from  that  ordinarily  employed  in  making  bricks.  Indeed, 
in  most  compositions  of  matter,  some  small  difference  in  the  proportions 
must  occasionally  be  required,  since  the  ingredients  proposed  to  be  com- 
pounded must  sometimes  be  in  some  degree  superior  or  inferior  to  those  most 
commonly  used.  In  this  case,  however,  the  general  rule  is  given  with 
entire  exactness  in  its  terms  ;  and  the  riotice  of  the  variations,  mentioned  in  the 
specification,  would  seem  to  be  designed  to  guard  the  brick-maker  against 
mistakes,  into  which  he  might  fall  if  his  clay  was  more  or  less  hard  to  burn 
than  the  kind  ordinarily  employed  in  the  manufacture.  It  may  be,  indeed, 
that  the  qualities  of  clay  generally  differ  so  widely,  that  the  specification  of 
the  proportions  stated  in  this  case  is  of  no  value  ;  and  that  the  improvement 
cannot  be  used  with  advantage  in  any  case,  or  with  any  clay,  without  first 
ascertaining  by  experiment  the  proportion  to  be  employed.  If  that  be  the 
case,  then  the  invention  is  not  patentable.  Because,  by  the  terms  of  the  Act 
of  Congress,  the  inventor  is  not  entitled  to  a  patent.  Bui  this  does  not 
appear  to  be  the  case  on  the  face  of  this  specification.  And  whether  the  fact 
is  so  or  not,  is  a  question  to  be  decided  by  a  jury,  upon  the  evidence  of  per- 
sons skilled  in  the  art  to  which  the  patent  appertains.  The  Circuit  Court, 
therefore,  erred  in  instructing  the  jury,  that  the  specification  was  too  vague 
and  uncertain  to  support  the  patent,  and  its  judgment  must  be  reversed." 


THE    SPECIFICATION.  171 

branch  of  industry  to  which  his  invention  belongs.^  The  spe- 
cification is,  as  we  have  seen,  addressed  to  persons  acquainted 
with  the  nature  of  the  business ;  some  technical  linowledge  is 
presumed  on  the  part  of  those  who  will  undertake,  after  the 
patent  is  expired,  to  carry  out  the  invention  ;  and  such  persons 
are  to  be  called  as  witnesses  to  explain  the  language  to  the  jury, 
while  the  patent  is  in  force,  and  to  show  that  it  is  capable  of 
being  understood  by  those  to  whom  it  is  addressed.  Accord- 
ingly it  has  been  said,  that  a  specification  containing  scientific 
terms,  which  are  not  understood,  except  by  persons  acquainted 
with  the  nature  of  the  business,  is  not  bad  because  an  ordinary 
person  does  not  understand  it,  provided  a  scientific  person  does  ; 
but  a  specification  using  common  language,  and  stating  that  by 
which  a  common  %nan  may  be  misled,  though  a  scientific  man 
would  not,  when  it  does  not  profess  to  use  scientific  terms,  and 
an  ordinary  man  is  misled  by  it,  would  not  be  good.^  And  it 
has  been  held  that  if  a  specification  contain  an  untrue  statement 
in  a  material  circumstance,  of  such  a  nature  that,  if  literally 
acted  upon  by  a  competent  workman,  it  would  mislead  him,  and 
cause  the  experiment  to  fail,  the  specification  is  therefore  bad, 
and  the  patent  invalidated,  although  the  jury,  on  the  trial  of  an 
action  for  the  infringement  of  the  patent,  find  that  a  competent 
workman,  acquainted  with  the  subject,  would  not  be  misled  by 
the  error,  but  would  correct  it  in  practice.^ 

<§.  162.  The  specification  need  not  describe  that  which  is 
within  the  ordinary  knowledge  of  any  workman  who  would  be 
employed  to  put  up  the  apparatus ;  as,  a  condenser,  in  con- 
structing a  gas  apparatus."*  So,  too,  a  deviation  from  the  precise 
dimensions  shown  by  the  specification  and  model,  so  as  to  make 


1  Per  Lord  Abinger  C.  B.  in  Neilson  v.  Harford,  Webs.  Pat.  Cas.  341. 
See  also  Derosne  v.  Fairie,  Ibid.  154,  167. 
«  Ibid. 

3  Neilson  v.  Harford,  8  M.  &  W.  806  ;  S.  C.  Webs.  Pat.  Cas.  328. 
*  Crossley  v.  Beverley,  Webs.  Pat.  Cas.  110,  note. 


172  LAW     OF    PATENTS. 


different  parts  work  together,  is  within  the  knowledge  of  any 
workman.^  But  if  the  practical  application  of  the  invention 
involves  a  particular  kind  of  knowledge  on  the  part  of  a  work- 
man, requiring  him  to  do  that  which  a  person  of  ordinary  engi- 
neering skill  ought  to  know  how  to  do,  it  must  at  least  suggest 
to  him  that  that  thing  is  to  be  done,  if  it  does  not  specifically 
point  out  the  mode  of  doing  it.^     In  like  manner  it  is  not  ne- 


'  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  176.  In  this  case,  Alderson,  B. 
said  to  the  jury,  "  In  the  case  of  the  steam  engine,  there  was  put  in  on  the 
part  of  the  defendants,  a  model,  made,  as  it  was  said,  according  to  the  speci- 
fication, which  model  would  not  work.  The  model  was  a  copy  of  the  draw- 
ing, and  would  not  work,  because  one  part  happened  to  be  a  little  too  small, 
whereas  if  it  had  been  a  little  larger,  it  would  have  worked.  Now,  a  work- 
man of  ordinary  skill,  when  told  to  put  two  things  together,  so  that  they 
should  move,  would  of  course,  by  the  ordinary  knowledge  and  skill  he  pos- 
sesses, make  them  of  sufficient  size  to  move.  There  he  would  have  to  bring 
to  his  assistance  his  knowledge  that  the  size  of  the  parts  is  material  to  the 
working  of  the  machine.  That  is  within  the  ordinary  knowledge  of  every 
workman.  He  says,  "I  see  this  will  not  work,  because  it  is  too  small," 
and  then  he  makes  it  a  little  larger,  and  finds  it  will  work  ;  what  is  required 
is,  that  the  specification  should  be  such  as  to  enable  a  workman  of  ordinary 
skill  to  make  the  machine;  with  respect  to  that,  therefore,  I  do  not  appre- 
hend you  will  feel  much  difficulty." 

*  In  the  case  last  cited,  the  same  learned  judge  further  instructed  the  jury 
as  follows,  "  Mr.  George  Cottam  says,  '  It  is  a  common  problem  to  find  a 
centre  from  three  given  points,  and  a  person  of  ordinary  engineering  skill 
ought  to  be  able  to  do  that.'  The  question  is,  whether  it  ought  not  to  be 
suggested  to  him  by  the  specification,  that  that  is  the  problem  to  be  solved. 
Then  Mr.  Curtis  says, '  I  have  made  wheels  on  this  plan.'  You  see  he  made 
the  two  wheels  which  were  sent  to  the  Venice  and  Trieste  Company,  but  those 
were  made  under  the  direction  of  Mr.  Galloway,  the  inventor.  Now,  it 
somewhat  detracts  from  the  weight  due  to  his  testimony,  not  as  to  his 
respectability,  but  as  to  the  value  of  his  evidence  to  you,  that  he  had  received 
the  verbal  instructions  of  Mr.  Galloway.  It  may  be,  that  he  could  do  it 
because  of  his  practice  under  Mr.  Galloway  ;  and  it  must  be  recollected  that 
people  in  other  places  would  not  have  that  advantage.  He  says,  he  would 
not  have  any  difficulty  in  doing  it ;  and  he  says,  '  I  should  not  consider  my 
foreman  a  competent  workman  unless  he  were  able  to  make  the  wheel  from 
the  specification  and  drawings.'  He  says,  '  I  could  alter  the  angle  by  alter- 
ing the  cranks.'     The  question  is  not,  whether  he  could  do  that,  but  whether 


THE    SPECIFICATION.  173 

cessary,  in  the  description  of  a  machine  to  state  of  what  material 
every  part  should  be  made,  where  the  principle  of  operation  and 
the  effect  are  the  same,  whether  the  parts  be  made  of  one  ma- 
terial or  another  ;  ^  but  if  a  particular  material  be  essential  to  the 
successful  operation  of  the  machine,  as  the  patentee  uses  it, 
he  must  direct  the  use  of  that  material. 

<§,  163,  In  the  case  of  machinery,  the  statute  directs  the 
patentee  to  accompany  his  specification  with  "  a  drawing  or 
drawings,  and  written  references,  where  the  nature  of  the  case 
admits  of  drawings."  The  object  of  annexing  drawings  is  both 
to  distinguish  the  thing  patented  from  other  things  known  before, 
and  to  explain  the  mode  of  constructing  the  subject  of  the 
patent.  It  has  been  settled,  that  the  drawings  constitute  a  part 
of  the  specification,  when  annexed  thereto,  and  may  be  used  to 
explain  or  help  out  the  otherwise  imperfect  description  in  the 
specification.  So  that  it  is  not  necessary  that  the  description 
should  be  wholly  in  writing,  but  it  may  be  partly  in  writing  and 
partly  in  drawing ;  and  if,  by  a  comparison  of  the  words  and 
the  drawings,  the  one  will  explain  the  other  sufficiently  to  enable 
a  skilful  mechanic  to  perform  the  work,  and  to  show  what  is  the 
invention  claimed,  the  specification  will  be  sufficient.^  And  it 
has  been  held,  that  in  order  to  make  a  drawing  when  annexed 
to  or  accompanying  a  specification,  part  of  the  specification,  so 
that  the  written  description  may  be  read  by  it,  it  is  not  neces- 
sary that  the  written  description  should  contain  references  to 
the  drawing ;  that  the  direction  in  the  statute,  to  annex  "  draw- 
ings and  written  references,"  means  that  where  references  from 
the  writing  to  the  drawing  are  necessary  to  the  understanding 


he  could  alter  the  angle  to  a  particular  angle  by  altering  the  cranks  in  a  par- 
ticular way,  that  is,  whether,  having  the  angle  given  to  him,  he  could  make 
the  alteration  that  was  desired." 

»  Brooks  V.  Bicknell,  3  M'Lean's  R.  250,  261. 

2  Earle  v.   Sawyer,  4  Mas.  1,  9;  Bloxam  v.  Elsee,  1   Car.  &  P.  558; 
Brnnton  v.  Hawkes. 

15* 


174  LAW     OF     PATENTS. 

of  the  machine  or  improvement,  they  are  to  be  made ;  but  that 
the  description  of  many  machines  or  improvements,  when  ac- 
companied by  a  drawing,  may  be  perfectly  understood  with 
references  in  the  description  itself.^ 

<§>  164.  It  was  formerly  held  in  England  that  the  drawings 
annexed  to  specifications  ought  to  be  drawn  on  a  scale  ;  so  that 
the  relation  and  proportion  of  the  parts  to  each  other,  and  the 
dimensions  of  the  different  parts  might  appear  in  due  ratio  to 
each  other.^  But  this  rule  has  been  modified  ;  and  it  seems 
now  to  be  considered  that  if  a  mechanic  can  make  the  subject 
of  the  patent  from  the  drawing  in  perspective,  it  is  not  neces- 
sary that  there  should  be  a  scale. ^  Indeed,  it  is  a  necessary 
consequence  of  the  rule  which  makes  the  written  description 
open  to  explanation  by  the  drawing,  to  hold  that  the  drawing  is 
open  to  explanation  by  the  written  description.  So  long  as 
both  together  enable  the  public  to  know  and  practice  the  inven- 
tion, it  must  be  immaterial  whether  the  drawing  is  made  upon 
a  scale  or  not.  But  if  the  subject  of  the  patent  could  not  be 
made,  without  many  experiments,  unless  the'drawing  is  upon  a 
scale,  then  undoubtedly  the  whole  specification  taken  together, 
being  the  written  description  and  the  drawing,  would  be 
defective. 

§  165.  It  should  not  be  forgotten,  that  the  statute  requires  a 
formal  attestation  of  the  specification  and  drawings.  They 
must  be  signed  by  the  inventor  and  by  two  witnesses.'*  It  has 
been  suggested,  that  the  signing  of  the  specification  referring  to 
the  drawings  is  in  effect  attesting  the  drawings.^     But  whether 

'  Brooks  V.  Bicknell,  3  M'Lean's  R.  250,  261  :  Washburn  v.  Gould,  3 
Story's  R.  122,  133. 

*  The  King  v.  Arkwright,  Dav.  Pat.  Cas.  114, 
'  Godson  on  Patents,  p.  137. 

♦  Act  of  July  4,  1836,  ^6,  "  tvhich  description  and  drawings,  signed  by  the 
inventor  and  attested  by  two  witnesses,  shall  be  filed  in  the  patent  office." 

»  Phillips  on  Patents,  p.  302,  303. 


THE    SPECIFICATION.  175 

the  statute  is  to  be  so  construed  as  to  require  botli  the 
specification  and  the  drawings  to  be  signed,  has  not  been 
decided. 

<§)  166.  Provision  is  made  by  the  thirteenth  section  of  the  Act 
of  1836  for  the  amendment  of  the  specification  by  the  addition 
of  new  improvements  made  after  the  patent  has  issued.  The 
description  of  any  such  new  improvement  may  be  filed  in  the 
patent  office,  and  is  directed  to  be  annexed  by  the  commissioner 
to  the  original  specification,  with  a  certificate  of  the  time  of  its 
being  so  annexed,  and  thereafter  it  is  to  have  the  same  effect 
as  if  it  had  been  embraced  in  the  original  specification.^ 

<§>  167.  A  still  further  provision  is  made  for  the  amendment 
of  a  redundant  specification,  by  the  filing  of  a  Disclaimer. 
The  Act  of  1837,  ch.  45,  <^  7,  provides,  that,  "whenever  any 
patentee  shall  have,  through  inadvertence,  accident,  or  mistake, 
made  his  specification  of  claim  too  broad,  claiming  more  than 
that  of  which  he  was  the  original  or  first  inventor,  some  mate- 
rial and  substantial  part  of  the  thing  patented  being  truly  and 
justly  his  own,  any  such  patentee,  his  administrators,  executors 
and  assigns,  whether  of  the  whole  or  of  a  sectional  interest 
therein,  may  make  disclaimers  of  such  parts  of  the  thing  pa- 
tented as  the  disclaimant  shall  not  claim  to  hold  by  virtue  of  the 
patent  or  assignment,  stating  therein  the  extent  of  his  interest 
in  such  patent,  which  disclaimer  shall  be  in  writing,  attested  by 
one  or  more  witnesses,  and  recorded  in  the  patent  office,  on  pay- 
ment by  the  person  disclaiming,  in  manner  as  other  patent 
duties  are  required  by  law  to  be  paid,  of  the  sum  often  dollars. 
And  such  disclaimer  shall  thereafter  be  taken  and  considered 
as  part  of  the  original  specification,  to  the  extent  of  the  interest 
which  shall  be  possessed  in  the  patent  or  right  secured  thereby, 
by  the  disclaimant,  and  by   those  claiming  by  or  under  him 


»  Act  of  4th  July,  1836,  <^  13. 


176  LAW     OF      PATENTS. 

subsequent  to  the  record  thereof.  But  no  such  disclaimer  shall 
affect  any  action  pending  at  the  time  of  its  being  filed,  except 
so  far  as  may  relate  to  the  question  of  unreasonable  neglect  or 
delay  in  filing  the  same." 

*§,  168.  The  9th  section  of  the  same  act  provides  as  follows  : 
"  (Any  thing  in  the  fifteenth  section  of  the  act  to  which  this  is 
additional  to  the  contrary  notwithstanding)  that,  whenever  by 
mistake,  accident,  or  inadvertence,  and  without  any  wilful  de- 
fault or  intent  to  defraud  or  mislead  the  public,  any  patentee 
shall  have  in  his  specification  claimed  to  be  the  original  and 
first  inventor  or  discoverer  of  any  material  or  substantial  part 
of  the  thing  patented,  of  which  he  was  not  the  first  and  origi- 
nal inventor,  and  shall  have  no  legal  or  just  right  to  claim  the 
same,  in  every  such  case  the  patent  shall  be  deemed  good  and 
valid  for  so  much  of  the  invention  or  discovery  as  shall  be 
truly  and  bona  fide  his  own :  Pr'ovided,  it  shall  be  a  material 
and  substantial  part  of  the  thing  patented,  and  be  definitely 
distinguishable  from  the  other  parts  so  claimed  without  right  as 
aforesaid.  And  every  such  patentee,  his  executors,  adminis- 
trators and  assigns,  whether  of  a  whole  or  a  sectional  interest 
therein,  shall  be  entitled  to  maintain  a  suit  at  law  or  in  equity 
on  such  patent  for  any  infringement  of  such  part  of  the  inven- 
tion or  discovery  as  shall  be  bona  fide  his  own  as  aforesaid,  not- 
withstanding the  specification  may  embrace  more  than  he  shall 
have  any  legal  right  to  claim.  But,  in  every  such  case  in  which 
a  judgment  or  verdict  shall  be  rendered  for  the  plaintiff,  he 
shall  not  be  entitled  to  recover  costs  against  the  defendant, 
unless  he  shall  have  entered  at  the  Patent  Office  prior  to  the 
commencement  of  the  suit,  a  disclaimer  of  all  that  part  of  the 
thing  patented  which  was  so  claimed  without  right :  Provided, 
however,  that  no  person  bringing  any  such  suit  shall  be  entitled 
to  the  benefit  of  the  provisions  contained  in  this  section,  who 
shall  have  unreasonably  neglected  or  delayed  to  enter  at  the 
Patent  OflSce  a  disclaimer  as  aforesaid." 


THE    SPECIFICATION.  177 

<§>  169.  The  disclaimer  mentioned  in  the  seventh  section  has 
been  held  to  apply  solely  to  suits  pending  when  the  disclaimer 
was  filed  in  the  patent  office  ;  and  that  mentioned  in  the  ninth 
section  to  suits  brought  after  the  disclaimer  is  so  filed. ^ 

»  Wyeth  V.  Stone,  1  Story's  R.  273,  293.  In  this  case,  Mr.  Justice 
Story  thus  expounded  the  statute  :  "  We  come,  then,  to  the  remaining 
point,  whether,  although  under  the  Patent  Act  of  1793,  ch.  55,  the  patent 
is  absolutely  void,  because  the  claim  includes  an  abstract  principle,  and  is 
broader  than  the  invention  ;  or,  whether  that  objection  is  cured  by  the  dis- 
claimer made  by  the  patentee  (Wyeth,)  under  the  act  of  1837,  ch.  45.  The 
seventh  section  of  that  Act  provides,  '  That  whenever  any  patentee  shall 
have,  through  inadvertence,  accident,  or  mistake,  made  his  specification  too 
broad,  claiming  more  than  that,  of  which  he  was  the  original  or  first  in- 
ventor, some  material  and  substantial  part  of  the  thing  patented  being  truly 
or  justly  his  own,  any  such  patentee,  his  administrators,  executors,  or  assigns, 
whether  of  the  whole  or  a  sectional  part  thereof,  may  make  disclaimer  of 
such  parts  of  the  thing  patented,  as  the  disclaimant  shall  not  claim  to  hold 
by  virtue  of  the  patent  or  assignment,  &c.,  &c.  And  such  disclaimer  shall 
be  thereafter  taken  and  considered  as  a  part  of  the  original  specification,  to 
the  extent  of  the  interest,  which  shall  be  possessed  in  the  patent  or  right 
secured  thereby  by  the  disclaimant,  &c.'  Then  follows  a  proviso,  that  '  no 
such  disclaimer  shall  affect  any  action  pending  at  the  time  of  its  being  filed, 
except  so  far  as  may  relate  to  the  question  of  unreasonable  neglect  or  delay 
in  filing  the  same.'  The  ninth  section  provides,  '  That  whenever,  by  mis- 
take, accident,  or  inadvertence,  and  without  any  wilful  default  or  intent  to 
defraud  or  mislead  the  public,  any  patentee  shall  have,  in  his  specifica- 
tion, claimed  to  be  the  first  and  original  inventor  or  discoverer  of  any  material 
or  substantial  part  of  the  thing  patented,  of  which  he  was  not  the  first  and 
original  inventor,  and  shall  have  no  legal  or  just  right  to  claim  the  same,  in 
every  such  case  the  patent  shall  be  deemed  good  and  valid  for  so  much  of 
the  invention  or  discovery,  as  shall  be  truly  and  bona  Jide  his  own;  provided 
it  shall  be  a  material  and  substantial  part  of  the  thing  patented,  and  shall 'be 
definitely  distinguishable  from  the  other  parts  so  claimed  without  right  as 
aforesaid.'  Then  follows  a  clause,  that  in  every  such  case,  if  the  plaintiff 
recovers  in  any  suit,  he  shall  not  be  entitled  to  costs,  '  unless  he  shall  have 
entered  at  the  patent  office,  prior  to  the  commencement  of  the  suit,  a  dis- 
claimer of  all  that  part  of  the  thing  patented,  which  was  so  claimed  without 
right ;'  with  a  proviso,  'That  no  person  bringing  any  such  suit  shall  be  en- 
titled to  the  benefits  of  the  provisions  contained  in  this  section,  who  shall 
have  unreasonably  neglected  or  delayed  to  enter  at  the  patent  office  a  dis- 
claimer as  aforesaid.' 


178  LAW    OF    PATENTS. 

"Now,  it  seems  to  me,  that  upon  the  true  construction  of  this  statute, 
the  disclaimer  mentioned  in  the  seventh  section  must  be  interpreted  to  apply 
solely  to  suits  pending,  when  the  disclaimer  is  filed  in  the  patent  office  ;  and 
the  disclaimer  mentioned  in  the  ninth  section  to  apply  solely  to  suits  brought 
after  the  disclaimer  is  so  filed.  In  this  way,  the  provisions  harmonize  with 
each  other;  upon  any  other  construction  they  would  seem,  to  some  extent, 
to  clash  with  each  other,  so  far  as  the  legal  effect  and  operation  of  the  dis- 
claimer is  concerned. 

"In  the  present  case,  the  suit  was  brought  on  the  first  of  January,  1840, 
and  the  disclaimer  was  not  filed  until  the  twenty-fourth  of  October,  of  the 
same  year.  The  proviso,  then,  of  the  seventh  section  would  seem  to  pre- 
vent the  disclaimer  from  affecting  the  present  suit  in  any  manner  whatsoever. 
The  disclaimer,  for  another  reason,  is  also  utterly  without  effect  in  the  pres- 
ent case  ;  for  it  is  not  a  joint  disclaimer  by  the  patentee  and  his  assignee, 
Tudor,  who  are  both  plaintiffs  in  this  suit ;  but  by  Wyeth  alone.  The  dis- 
claimer cannot,  therefore,  operate  in  favor  of  Tudor,  without  his  having 
joined  in  it,  in  any  suit,  either  at  law,  or  in  equity.  The  case,  then,  must 
stand  upon  the  other  clauses  of  the  ninth  section,  independent  of  the 
disclaimer. 

"  This  leads  me  to  say,  that  I  cannot  but  consider,  that  the  claim  made  in 
the  patent  for  the  abstract  principle  or  art  of  cutting  ice  by  means  of  an 
apparatus  worked  by  any  other  power  than  human,  is  a  claim  founded  in 
inadvertence  and  mistake  of  the  law,  and  without  any  wilful  default  or  intent 
to  defraud  or  mislead  the  public,  within  the  proviso  of  the  ninth  section. 
That  section,  it  appears  to  me,  was  intended  to  cover  inadvertences  and  mis- 
takes of  the  law,  as  well  as  inadvertences  and  mistakes  of  fact ;  and,  there- 
fore, without  any  disclaimer,  the  plaintiffs  might  avail  themselves  of  this 
part  of  the  section  to  the  extent  of  maintaining  the  present  suit  for  the 
other  parts  of  the  invention  claimed,  that  is,  for  the  saw  and  for  the  cutter 
and  thereby  protect  themselves  against  any  violation  of  their  rights,  unless 
there  has  been  an  unreasonable  neglect  or  delay  to  file  the  disclaimer  in  the 
office.  Still,  however,  it  does  not  seem  to  me,  that  a  court  of  equity  ought 
to  interfere  to  grant  a  perpetual  injunction  in  a  case  of  this  sort,  whatever 
might  be  the  right  and  remedy  at  law,  unless  a  disclaimer  has  been  in  fact 
filed  at  the  patent  office  before  the  suit  is  brought.  The  granting  of  such 
an  injunction  is  a  matter  resting  in  the  sound  discretion  of  the  Court ;  and 
if  the  Court  should  grant  a  perpetual  injunction  before  any  disclaimer  is 
filed,  it  may  be,  that  the  patentee  may  never  afterwards,  within  a  reasonable 
time,  file  any  disclaimer,  although  the  Act  certainly  contemplates  the  neg- 
lect or  delay  to  do  so  to  be  a  good  defence  both  at  law  and  in  equity,  in 
every  suit,  brought  upon  the  patent,  to  secure  the  rights  granted  thereby. 
However,  it  is  not  indispensable  in  this  case  to  dispose  of  this  point,  or  of 
the  question  of  unreasonable  neglect  or  delay,  as  there  is  another  objection, 


THE    SPECIFICATION. 


179 


which  in  my  judgment  is  fatal,  in  every  view,  to  the  maintenance  of  the 
suit  in  its  present  form." 


Note.  —  The  following  synopsis  of  the  leading  English  cases  on  the  sub- 
ject of  specifications  may  be  found  convenient  to  the  reader,  although  they 
are  cited  in  the  foregoing  chapter.  The  references  are  to  the  pages  of 
Webster's  Patent  Cases  ;  but  the  same  cases  may  be  found  in  other  reports, 
by  reference  to  the  Index  of  Cases  prefixed  to  this  work. 


The  object  of  the  specification  is, 
that  after  the  term  has  expired  the 
public  shall  have  the  benefit  of  the 
invention.  Arhwright  v.  Nightni- 
gaie,  Webster's  Pat.  Cas.  61. 

The  meaning  of  the  specification 
is,  that  others  may  be  taught  to  do 
that  for  which  the  patent  is  granted, 
and  if  any  material  part  of  the  pro- 
cess be  omitted,  the  specification  is 
bad.     Liardet  v.  Johnson,  53. 

As  the  omitting  to  state  the  use  of 
tallow,  which  the  patentee  employed 
for  facilitating  the  manufacture  of 
steel  trusses.     Ibid.  53. 

Or,  the  omitting  to  state  the  use  of 
a  materia],  aquafortis,  which  the  pa- 
tentee used  for  obtaining  the  effect 
more  rapidly.      Wood  v.  Zimmer,  H'2. 

Or,  if  the  patentee  employ  cheaper 
articles  than  those  specified. 

Turner  v.   Winter,  81. 

It  is  required  as  the  price  of  the 
monopoly,  that  the  patentee  should 
enrol  to  the  very  best  of  his  know- 
ledge and  judgment,  the  fullest  and 
most  sufficient  description  of  the  par- 
ticulars on  which  the  efl>!Ct  depended, 
that  he  was  enabled  to  do. 

Liardet  v.  Johnson,  54. 

The      most    advantageous     mode 
known  to  the  inventor,  and  any  cir- 
cumstance conducive  to  the  advanta- 
geous operation,  must  be  stated. 
Morgan  v.  Seaward,  175,  182. 

The  specification  is  intended  to 
teach  the  public  ;  it  must  fully  dis- 
close the  secret,  and  contain  nothing 
materially  false  or  defective. 

R.  V.  Arkwright,  66. 

The   specification    must   give  the 


best  mode   known    to   the  inventor, 
and  must  not  mislead- 

Walton  V.  Bateman,  622. 

The  specification  ought  to  be  so 
clearly  worded  as  to  enable  any  per- 
son of  sufficient  understanding  on  the 
particular  subject,  to  attain  the  result 
without  doubt  or  difficulty,  it  being 
the  price  paid  by  the  inventor  for 
keeping  the  public  out  of  the  manu- 
lacture.      Gibson  v.  Brand,  629. 

Some  knowledge  is  requisite  in  the 
person  reading  the  specification, 
which  is  addressed  to  artists  of  com- 
petent skill  in  the  particular  manu- 
facture.    Birhford  \.  Skeives,  219. 

The  specification  addressed  to  per- 
sons of  skill  in  the  subject-matter  and 
particular  trade.  Arhcright  v.  Night- 
ingale, 61  ;  Elhoii  v.  Aston,  224. 

The  specification  must  be  sufficient 
for  persons  skilled  in  the  subject. 
Huddart  v.  Grimshaiv,  87. 

The  general  test  of  sufficiency  of 
the  specification  for  mechanics  or 
persons  acquainted  with  the  subject, 
limited  by  the  condition,  that  they 
should  be  able  to  make  the  machine 
by  following  the  directions  of  the  spe- 
cification, without  any  new  inven- 
tions or  additions  of  their  own. 

R.  V.  Arhcright,  66. 

Any  material  alteration  to  be  made 
in  existing  apparatus  or  machines 
must  be  stated.     Jbid.  67. 

As,  with  reference  to  the  materials 
employed,  or  their  form,  or  the  speed 
of  the  parts,  or  their  relative  dimen- 
sions.    Ibid.  67. 

The  representation  and  description 
of  parts  of  no  use,  or  without  distin- 


180 


LAW     OF    PATENTS. 


guishing  to  what  purposes  they  are 
to  be  applied,  or  fur  the  purpose  of 
puzzlinn;,  will  render  the  patent  void, 
the  specification  not  affording  that 
fair,  full,  and  true  discovery,  which 
the  public  have  a  right  to  demand  in 
return  for  the  monopoly.     Ibid.  69. 

If  that  wliich  is  stiown  will  not  do 
of  itself,  but  requires  something  to  be 
added,  the  specification  is  bad. 

Ibid.  70. 

If  different  parts  are  to  move  with 
different  velocities,  that  must  be 
stated.     Ibid.  70. 

If  more  parts  be  inserted  than  are 
necessary,   as   ten,    where   four  are 
sufficient,  the  specification  is  void. 
Ibid. 

Information  must  not  be  requisite 
from  other  souices.     Ibid. 

As,  where  a  workman  has  learned 
to  make  the  machine  from  seeing 
others  make  it.     Ibid. 

The  specification  must  be  such  as 
can  be  followed  by  a  person  posses- 
sing the  ordinary  knowledge,  com- 
mon to  the  trade,  without  invention 
or  addition,  or  setting  himself  to 
solve  a  problem. 

Morgan  v.  Seaward,  174. 

Information  acquired  from  other 
sources  than  the  specification  is  to  be 
excluded  ;  but  reasonable  data  must 
be  given.     Ibid.  179. 

Ail  extreme  or  exao-gerated  cases 
must  be  discarded,  and  the  substance 
of  the  thing  looked  to.     Ibid.  IHO. 

It  is  not  sufficient  thai  a  skilful 
person  should  be  able  to  find  it  out  ; 
the  invention  must  be  effected  by  the 
directions  contained  in  the  specifica- 
tion.    Ibid.  185. 

The  specification  cannot  be  sup- 
ported by  the  fresh  invention  and 
correction  of  a  scientific  period.  To 
be  valid,  it  must  be  such  as,  when 
fairly  followed  out  by  a  competent 
workman,  without  invention  or  addi- 
tion, the  object  of  the  patent  may  be 
obtained.     Neilson  v.  Harford,  371. 

By  competent  skill  and  knowledge 
are  meant,  ordinary  skill  and  know- 
ledge, such  as  that  possessed  by 
practical  workmen  ;  not  the  degree  of 
skill  which  would  enable  a  person  on 
a  mere  hint  to  invent  a  machine  for 
the  purpose.     Ibid.  314. 


The  specification  being  for  the 
benefit  of  the  trade  must  be  sufficient 
for  workmen  competent  to  the  ordi- 
nary business  of  that  trade  ;  first  rate 
engineers  and  common  laborers  must 
be  excluded.  The  House/nil  Compa- 
ny v.  Neihon,  692. 

The  compositions  and  proportions, 
where  materials  and  quantity  are  of 
the  essence  of  the  invention,  must  be 
given.     Liardct  v.  Johnson,  54,  n. 

As,  in  the  case  of  a  medicine  or 
paint.     Ibid.  54,  n. 

A  specification  which  merely  sug- 
gests something,  so  as  to  throw  on 
the  public  the  trouble  of  experiment, 
is  bad.     Morgan  v.  Seaivard,  175. 

A  deviation  from  the  precise  di- 
mensions shown  so  as  to  make  differ- 
ent parts  work  together,  is  within  the 
knowledge  of  any  workman. 

Ibid.  176. 

The  omission  to  give  directions  as 
to  matters  within  the  knowledge  of 
a  workman,  who  would,  under  ordi- 
nary circumstances  be  employed  to 
carry  out  the  invention,  is  no  ground 
of  invalidity. 

Crossley  v.  Beverley  110,  n.  n. 

The  omission  to  mention  in  the 
specification  anything  which  the  pa- 
tentee knows  to  be  necessary  for  the 
beneficial  enjoyment  of  his  invention, 
is  a  fatal  defect. 

Neilson  v.  Harford,  317,  321. 

But  the  omission  to  mention  some- 
thing which  contributes  only  to  the 
degree  of  the  benefit,  provided  the 
apparatus  described  would  work  ben- 
eficially and  be  worth  adopting,  is  not 
a  fatal  defect.     Ibid.  317. 

The  omission  to  mention  the  use 
of  water  twyres  will  not  invalidate 
the  specification,  it  appearing  that  a 
beneficial  effect  could  be  produced 
without  such  apparatus,  and  that  any 
person  acquainted  with  smelling 
knows,  that  if  the  heat  is  increased, 
recourse  must  be  had  to  some  method 
of  guarding  the  pipe,  and  that  the 
water  twyre  was  well  known  as  one 
mode  for  that  purpose.     lb.  318. 

If  the  apparatus  described  can  be 
used  beneficially  in  its  simplest  form, 
it  is  no  objection  that  great  improve- 
ments may  have  been  made,     lb. 317. 

Not  necessary  that  the  apparatus 


THE     SPECIFICATION, 


181 


described  should   produce  the  great- 
est amount  of  benefit. 

The  Househill  Co.  v.  Neihon,  695. 

It  is  sufficient  if  persons  acquainted 
with   heating-  air  would  construct  an 
apparatus  productive  of  some  benefit. 
lb.  fiiM. 

If  experiments  are  necessary  for 
the  production  of  any  beneficial  ef- 
fects, the  patent  is  void. 

Neihon  v.  Harford,  320. 

As,  if  a  particular  temperature  be 
essential  and  not  stated,     lb.  318. 

The  specification  need  not  describe 
that  which   is  within  the  knowledge 
of  any  workman  who  would  be  em- 
ployed-to  put  up  the  apparatus. 
Crosshy  v.  Beverley,  110,  n.  n. 

As,  a  condenser,  in  constructing  a 
gas  apparatus,     lb.  110,  n.  n. 

A  patentee  is  bound  to  insert  in 
his  specification  the  most  improved 
means  of  carrying  out  his  invention 
with  which  he  is  acquainted  at  the 
time  of  the  enrolment  of  the  specifi- 
cation,    lb.  116. 

As,  the  different  mechanical  con- 
trivances for  carrying  out  the  prin- 
ciple in  respect  of  which  he  applied 
for  his  patent,     lb. 

If  it  were  otherwise,  and  if  such 
contrivances  must  be  tlie  subject  of 
fresh  letters  patent,  the  monopoly 
would  be  prolonged,     lb.  116 

Time  is  allowed  for  the  specifica- 
-tion,  in  order  that  the  invention  may 
be   brought   to  its  greatest  state  of 
perfection,     lb.  117. 

All  improvements  made  during  the 
interval  for  enrolling  tlie  specification 
should  be  described,     lb.  117. 

The  insertion  or  representation  of 
anything  as  important,  not  being  so 
in  fact,  will  vitiate  the  specification. 
Huddart  v.  Grimahaw,  93. 

Letters  patent  are  void  if  the  spe- 
cification be  ambiguous,  or  give  di- 
rections which  tend  to  mislead  the 
public.      Turner  v.  Winter,  77. 

As,  where  a  generic  term  "fossil 
salt  "  is  employed,  but  one  species 
only,  "sal  gem,"  will  succeed. 

lb.  80. 

Or,  where  one  of  several  articles 
named  will  not  succeed,     lb.  81. 

Where   the  specification   directed 

16 


the  use  of  a  subject,  bituminous 
scbistns,  saying,  the  carbonization 
has  nothing  particular,  only  it  is  con- 
venient before  carbonization  to  sepa- 
rate the  sulphates  of  iron  which  are 
mixed  with  it,  and  it  appeared  that 
all  bituminous  schistns  had  such  sul- 
phates, and  that  no  easy  means  were 
generally  known  of  removing  them, 
and  that  without  their  removal  the 
schistus  could  not  be  efficaciously 
used;  the  specification  held  insuffi- 
cient.    Derosne  v.  Fame,  157. 

If  a  substance  as  generally  known 
contain  foreign  matter,  the  presence 
of  which  is  positively  injurious,  the 
plaintiff  must  show  that  a  method  of 
easily  removing  such  foreign  matter 
is  known,     lb.   1(12. 

Aider,  if  such  foreign  matter  inter- 
fere to  a  limited  extent  only  with  the 
degree  of  benefit,     lb.   159. 

The  substance  named  must  answer 
the  purpose  proposed  beneficially. 
lb.  163,  164. 

A  specification  must  state  at  least 
one  method  which  will  succeed. 

lb.  165. 

All  the  substances  which  will  an- 
swer the  purpose  of  the  invention 
need  not  be  stated,  only  the  public 
must  not  be  misled. 

Bickford  v.  Skewes,  218, 

But  if  a  whole  class  of  substances 
be  stated  as  suitable,  and   any  one  of 
them  will   not  answer,  the  specifica- 
tion is  bad,  as  misleading  the  public. 
lb.  218. 

The  plainest  and  most  easy  way 
of  production  must  be  stated,  and  if 
obscure  terms  be  employed  for  the 
sake  of  concealment,  so  as  to  induce 
the  belief  that  elaboiate  processes 
are  necessary,  when  the  simplest 
will  succeed,  the  specification  is  bad. 
Savo7'y  V.  Price,  83. 

If  a  patentee  states  that  he  prefers 
a  certain  material,  having  ascertained 
that  no  other  would  answer,  he  mis- 
leads the  public. 

Crornplon  v.  Ibbotson,  83. 

Jf  an  article  be  described  by  a  par- 
ticular name,  the  patentee  knowing 
that  the  requisite  article  cannot  be 
ordinarily  procured  under  the  name 
by  which  it  is  described  in  the  speci- 


182 


LAW     OF      PATENTS. 


fication,  and  it  be  not  stated  where 
it  may  be  procured,  the   public  have 
not  that  full  and  precise  information 
which  thev  have  a  risht  to  require. 
Sturtz  V.  De  La  Rue,  83. 

A  studied  or  manifest  ambiguity 
will  vitiate. 

Galloway  v.  Bleaden,  524. 

It  is  no  objection  prima  facie  to  a 
specification,  that  it  contains  terms  of 
art  requiring  explanation. 

Derosne  v.  Fairie,  157. 

A  specification  containing  scientific 
terms  which  are  not  understood  ex- 
cept by  persons  acquainted  wiih  the 
nature  of  the  business,  is  not  bad, 
because  an  ordinary  person  does  not 
understand  it,  provided  a  scientific 
person  does  ;  but  a  specification  using 
common  language,  and  stating  that 
bv  which  a  common  man  may  be  mis- 
led, though  a  scientific  man  would 
not',  when  it  does  not  profess  to  use 
scientific  terms,  and  an  ordinary  man 
is  misled  by  it,  would  not  be  good. 
Ncilsonv.  Harford,  341. 

If  the   invention    be  an  improve- 
ment, it  must  distinctly   appear  on 
the  face  of  the  specification  as  such, 
and  not  as  an  original  discovery. 
Hill  v.  Thompson,  247. 

The  specification  must  inform  the 
public  what  is  new  and  what  old. 
MacFarlandv.  Price,  74. 

A  person  is  to  be  warned  by  the 
specification  against  the  use  of  the 
particular  invention.     lb. 

A  specification  describing  a  machine 
as  a  whole  is  sufficient,  though  the 
invention  be  an  improvement  on  a 
former  patent. 

Harmon  v.  Playne,  75. 


The  specification  is  to  warn  the 
public  of  what  is  prohibited,  and  to 
teach  them  the  invention. 

Morgan  v.  Seaward,  173. 

The  specification  must  distinguish 
between  what  is  new  and  old  ;  if  not, 
the  presumption  is,  that  the  patent 
extends  to  the  whole  and  to  each 
part.      Carpenter  v.  Smith,  532. 

A  mistake  in  a  specification  does 
not  of  necessity  vitiate  letters-pa- 
tent, as,  where  air  was  called  an 
imponderable  substance,  or  sulphur 
a  mineral,     Neilson  v.  Harford,  340. 

Semble,  that  a  mistake  in  respect 
of  a  matter  foreign  to  the  invention, 
and  which  cannot  mislead,  will  not 
vitiate  the  specification,     ]b.  353. 

The  inaccurate  use  of  words,  if 
explained  by  the  context,  will  not 
vitiate  a  specification.     Jb.  369. 

Semble,  that  the  evidence  of  a  per- 
son of  ordinary  skill  cannot  be  al- 
lowed to  contradict  or  correct  the 
plain  grammatical  sense  of  one  part 
of  the  specification,     //i.  329. 

The  sufficiency  of  the  specification 
in  matters  of  description  is  a  question 
for  the  jury.     Walton  v.  Potter,  595. 

In  the  absence  of  evidence  on  the 
part  of  the  defendants,  thai  persons 
have  been  misled  by  the  specification, 
it  is  sufficient  for  the  plaintiff  to  call 
persons  vvho  say,  that  to  them,  it  is 
clear.      Cornish  v.  Kcenc,  502. 

The  attention  of  the  plaintiff  must 
be  fully  and  clearly  directed  to  the 
objection  to  the  specification. 

Bichford  v.  Skewes,  219. 

The  finding  of  the  jury  on  an  ob- 
jection as  to  the  distinctness  of  the 
specification  is  conclusive.     Jb.  220. 


Note.  —  I  borrow  from  Mr.  Godson's  excellent  work  the  following  sum- 
mary of  the  defects  common  in  specifications,  as  they  are  treated  in  the 
English  law.     The  specification  is  bad,  when 

1.  The  terms  are  ambiguous. 

2.  Necessary  descriptions  are  omitted. 

3.  Parts  claimed  are  not  original. 

4.  Things  are  put  in  to  mislead. 
.5.  The  dravnngs  are  incorrect. 

T).   One  of  different  ways,  or  different  ingredients  named,  fails. 

7.  One  of  seoeral  effects  specified  is  not  produced. 

8.  The  things  described  are  not  the  best  known  to  the  patentee. 


THE    SPECIFICATION.  183 

If  the  terms  in  which  the  description  of  the  subject  is  expressed  be  ambig- 
uous, if  the  words  are  used  in  any  other  sense  than  that  in  which  they  are 
generally  understood,  the  invention  may  be  wholly  or  partially  concealed; 
and,  therefore,  on  that  account,  the  grant  would  be  invalid. 

Taking  the  title,  patent  and  specification  of  Campion's  letters  patent ' 
together,  it  was  very  difficult  to  say  whether  the  word  "  whatever  "  referred 
to  the  total  exclusion  of  starch,  or  whether  when  combined  with  the  words 
"  without  any  starch,"  it  was  merely  a  description  of  the  thread  of  the  sail- 
cloth which  had  been  improved.  For  that  ambiguity  the  patent  was  declared 
to  be  void. 

It  is  mentioned  in  Turner's  specification,"  "  take  any  quantity  of  lead,  and 
calcine  it;  or  minium  or  red  lead,"  whence  it  was  inferred  that  the  lead 
only  was  to  be  calcined,  and  a  doubt  arose  whether  the  minium  or  the  red 
lead  was  to  be  calcined.  Such  an  objection,  if  the  only  one,  would  probably 
not  invalidate  a  grant,  though  a  similar  ambiguity  is  carefully  to  be  guarded 
against.  In  that  case,  however,  calcination  would  not  produce  the  effect ; 
fusion  was  necessary. 

It  was  objected  to  the  same  patent,  that  the  substance  intended  to  be  pro- 
duced, and  called  white  lead,  could  only  be  applied  to  a  few  of  the  purposes 
of  white  lead.  The  answer  that  it  was  not  intended  to  make  white  lead  was 
not  sufficient.  In  the  specification,  the  inventor  should  have  stated  that  the 
effect  produced  a  substance  similar  to  white  lead,  and  then  have  set  forth  the 
useful  purposes  to  which  this  new  substance  might  be  converted  ;  and  ought 
not  to  have  misapplied  the  term  white  lead. 

There  was  also  another  word  in  that  specification  which  was  not  intelligi- 
ble. It  was  directed  iha.t  fossil  salt  should  be  used.  Now,  fossil  salt  is  a 
genus  having  many  species,  and  only  one  of  the  latter,  sal  gem,  would 
answer  the  intended  purpose.  For  those  reasons  the  patent  was  declared  to 
be  void. 

If  a  term  have  a  technical  meaning,  or  one  differing  in  the  usage  of  trade 
from  the  ordinary  sense  annexed  to  it,  the  word  may  be  received  in  its  per- 
verted sense;  and  if  the  manufacture  be  otherwise  intelligibly  described,  a 
mere  verbal  inaccuracy  will  not  vitiate  the  patent;'  but  if  a  word  be  not 
used  in  its  common  acceptation,  then  it  should  be  explained.  Thus,  in 
WAee/er's  specification,*  it  appeared,  that  by  the  word  "  malt,"  the  patentee 
meant  barley  fully  prepared  for  making  beer  ;  but  that  the  word  "  malt,"  in 
its  common  acceptation,  is  applied  to  the  grain  as  soon  as  it  has  germinated 
by  the  effect  of  moisture,  and  before  it  has  been  dried  ;  and  it  was  held  that 
he  ought  to  have  explained  his  meaning. 

'  Campion  v.  Benyon,  3  B.  &  B.  5. 

«  Turner  v.  Winter,  1  T.  R.  602. 

3  2  Hen.  Bla.  435. 

*  King  V.  Wheeler,  2  Barn.  &,  Aid.  349. 


184  LAW     OF     PATENTS. 

In  another  case,'  one  of  the  ingredients  was  a  white  substance  imported 
from  Germany,  and  which  could  be  purchased  at  one  or  two  color  shops  in 

London. 

The  only  description  or  denomination  given  to  it  in  the  specification  was, 
"The  purest  and  finest  chemical  white  lead  ;  "  but  there  was  no  article 
known  by  that  denomination  in  the  trade,  or  in  the  shops  where  white  lead 
is  usually  sold,  and  the  finest  white  lead  that  could  be  obtained  would  not 
answer  the  purpose.     The  specification  was  held  to  be  insiiflicient. 

If  in  a  manufacture,  something  well  known  be  used,  and  the  inventor 
give  a  design  of  it,  which  appears  to  be  of  a  different  thing,  though  he  means 
that  the  thinf  known  should  be  used,  the  specification  is  in  terms  ambig- 
uous ;  and  it  will  be  considered  as  being  worded  with  an  endeavor  to  conceal 
the  invention  and  deceive  the  public.  Thus,  Mr.  Arkwright,  although  he 
used  the  old  spiral  cylinder  in  his  machine,  so  managed  the  drawing  and 
description,  that  on  the  face  of  the  specification  it  appeared  that  he  intended 
to  use  a  parallel  cylinder.* 

The  several  distinct  parts  of  the  subject  of  a  patent  may  be  divided  into 
the  new  and  the  oM.  In  a  specification,  all  that  is  new  must  of  course  be 
clearly  elucidated.  The  old  parts  may  be  distinguished  as  they  are  material 
and  immaterial  in  producing  the  desired  effect.  Any  particular  thing, 
although  in  common  use,  when  it  is  applied  in  a  new  manner  to  the  produc- 
tion of  a  new  effect,  is  material,  and  becomes  a  part  of  the  substance  of  the 
invention,  and  must  be  described.  And  if  it  is  not  mentioned,  and  its  use 
pointed  out,  the  description  will  be  defective.  It  is  only  the  well-known  and 
immaterial  old  parts  that  need  not  be  described.^ 

A  material  alteration,  from  rollers  in  general,  had  been  made  in  the  rollers 
of  Arkwright's  machine,  of  which  no  description  was  given,  and  it  was  con- 
sidered as  wilfully  concealed.*  Mr.  Arkwright's  machine  was  intended  to 
prepare  for  spinning,  not  only  cotton,  but  silk,  flax,  and  wool  ;  yet  he 
described  all  the  parts  of  it  as  one  entire  instrument.  He  did  not  state,  as 
he  should  have  done,  that  the  hammer  in  the  front  of  it  was  only  to  be  used 
in  preparing  flax."  Other  parts,  which  were  put  on  or  off  as  occasion 
required,  appeared  as  though  they  were  fixed,  and  to  be  used  in  every  stage 
of  manufacturing  each  of  the  articles.*'  Those  omissions  in  the  description 
were  considered  of  sufficient  importance  to  invalidate  the  patent. 

Every  part  of  the  invention  which  is  new  must  be  accurately  described,  as 


'  Sturz  V.  De  La  Rue  and  others,  5  Russell's  Rep.  322. 

«  Printed  Case,  175  ;  Dav.  Pat.  Cas.  113.     Gods,  on  Pat.  54. 

3  Hill  V.  Thompson,  2  B.  Moore,  450,  455,  &c. 

■•  Printed  Case,  173;  Dav.  Pat.  Cas.  107. 

*  King  V.  Arkwright,  Printed  Case,  175  ;   Dav.  Pat.  Cas.  117. 

«  King  V.  Arkwright,  Printed  Case,  173;  Dav.  Pat.  Cas.  109. 


THE    SPECIFICATION.  185 

to  the  manner  in  which  it  is  to  operate.  In  the  case  of  Felton  v.  Greaves,^ 
the  patent  was  granted  for  a  macliine  for  an  expeditious  and  correct  mode  of 
giving  a  fine  edge  to  knives,  razors,  scissors,  and  other  cutting  instruments. 
The  machine  described  in  the  specification  consisted  of  two  circular  rollers 
of  steel  made  rough,  like  files,  and  the  instrument  to  be  sharpened  was 
passed  backward  and  forward  in  an  angle  formed  by  their  intersection.  It 
appeared  in  evidence  that  if  the  machine  was  intended  to  give  a  fine  edge  to 
scissors,  that  the  one  roller  should  be  smooth. 

In  the  specification  it  was  also  stated  that  other  materials  besides  steel 
might  he  employed,  and  it  appeared  that  if  Turkey  stones,  instead  of  steel, 
were  used  for  both  the  rollers,  it  was  possible  to  succeed  with  scissors. 
The  Lord  Chief  Justice  observed  :  "The  specification  describes  both  the 
rollers  as  files.  It  is  not  stated  either  that  the  rollers  must  be  one  rough  and 
the  other  smooth,  or  that  Turkey  stones  must  be  substituted  for  the  files, 
when  it  is  intended  to  sharpen  the  edges  of  scissors.  The  specification  is 
insufficient." 

There  are  persons  who  imagine  that  if  they  introduce  the  words  "  and  for 
other  useful  purposes  "  into  the  title  of  the  patent,  that  the  title  must  be 
good  ;  and  that  if  they  insert  the  words  "  other  materials  may  be  used,"  or 
"any  other  substance  from  which  the  thing  can  be  obtained,"  into  the 
description,  that  it  is  impossible  to  find  fault  with  the  specification.  There 
is  not  a  greater  error.  In  the  last  case  it  appeared  that  the  words  "  other 
materials,"  did  not  assist  the  description  or  save  the  specification. 

In  addition  to  the  old  authorities,  another  case  '  has  been  decided,  by  which 
it  appears  that  the  words  "  any  other  substance"  had  been  nearly  fatal  to  an 
important  patent.  In  the  introductory  part  of  the  specification,  Ciegg,  the 
original  patentee,  used  these  words  :  "  My  improved  gas-apparatus  is  for 
the  purpose  of  extracting  inflammable  gas  by  heat  from  pit-coals,  tar,  or  any 
other  substance  from  which  gas  or  gases,  capable  of  being  employed  for  illu- 
mination, can  be  extracted  by  heat ;  "  and  then  he  went  on  to  mention  the 
other  inventions.  In  the  description  of  the  retort,  he  called  it  "  a  horizontal 
flat  retort,  in  which  coal,  or  other  materials  capable  of  producing  inflam- 
mable gas,  are  heated,  and  the  gas  extracted  by  distillation  ;  "  and  in  the 
course  of  it  he  spoke  of  the  "  coal  or  other  substance  "  being  "  spread  in  a 
thin  layer."  Throughout  the  description  of  the  retort,  and  the  explanation 
of  the  drawings,  he  always  spoke  of"  coal,"  or  "coal  or  coke,"  or  "  coal  or 
other  substance  "  only. 

It  appeared  that  the  retort  was  incapable  of  obtaining  gas,  except  very 
imperfectly,  or  by  considerable  modifications, /rom  oil.  The  date  of  the 
patent  was  December  9,  1815,  that  of  the  specification,  June  8,  1816.     At 

'  3  Car.  &  Payne's  Rep.  611. 

*  Crossley  v,  Beverley,  1  Mood.  &  Malk.  283  ;  and  see  3  Car.  &  Payne,  513. 

16* 


186  LAW     OF     PATENTS. 

these  periods  it  was  known,  as  a  philosophical  fact,  that  gas  was  producible, 
from  oil;  but  it  had  not  been  proposed  to  manufacture  such  gas  for  purposes 
of  illumination.  Some  speculations,  indeed,  were  then  going  on,  and  a 
patent  was  obtained  about  the  same  time  for  making  it;  and  the  manufacture 
was  subsequently  brought  into  use,  though  not  very  generally. 

The  counsel  for  the  defendant  submitted  that  the  unfitness  of  the  retort  for 
making  gas  from  oil  was  fatal  to  the  patent,  and  contended  that  it  was  the 
duty  of  the  patentee  not  to  overstate  the  limits  within  which  his  invention 
would  be  useful,  that  no  person  may  be  led  to  unavailing  expense  in  trying 
it  upon  purposes  for  which  it  is  unfit. 

Lord  Tenterden  said  :  "  I  must  look  at  the  whole  of  the  specification 
together  ;  and  doing  so,  I  think  it  is  evident  that  it  only  represents  the  retort 
as  suited  to  materials  of  the  same  kind  as  coal.  I  am  of  opinion,  also,  that  I 
ought  to  understand  the  "  other  substances"  mentioned  to  signify  substances 
then  knoivn  to  be  available  for  the  purpose  of  illuminating  with  gas,  not 
everything  which  will  burn  with  aflame  ;  for  all  these,  in  a  certain  sense, 
will  produce  gas.  It  is  clear,  on  the  evidence,  that  oil  was  not  then  gene- 
rally considered  as  such  a  substance ;  and  the  fact,  that  some  speculations 
were  going  on  at  the  time  with  respect  to  its  being  so,  will  make  no  differ- 
ence. The  patentee  cannot  be  required  to  foresee  the  success  of  these  spec- 
ulations, if  they  have  succeeded  ;  but  I  must  consider  him,  as  a  practical 
man,  to  have  spoken  of  things  which  practical  men  then  treated  as  usable 
for  the  purpose  specified. 

On  both  grounds,  therefore,  I  must  decide  against  the  objection.  The  law 
is  severe  enough  in  breaking  up  patents  altogether  for  a  fault  in  any  part  of 
them,  without  straining  it  in  favor  of  such  an  objection. 

This  position  of  law  was  further  illustrated  in  the  case  of  Crompton  v. 
Ibbotson}  The  patent  was  for  an  improved  method  of  drying  and  finishing 
paper.  The  specification  contained  these  words  :  "  the  invention  consists  in 
conducting  paper  by  means  of  a  cloth  or  cloths  against  a  heated  cylinder  ; 
which  cloth  may  be  made  of  any  suitable  material,  but  /  prefer  it  to  be  made 
of  linen  warp  and  woolen  weft ;  which  cloth  is  shown  in  the  drawing  by  blue 
lines." 

It  appeared  by  the  evidence  of  the  plaintiff's  witness,  that,  as  to  the  con- 
ducting medium,  he  had  tried  several  things,  but  he  was  not  aware  of  any- 
thing that  would  answer  the  purpose  except  the  material  which  the  patentee 
said  he  preferred.  Whereupon  Mr.  Justice  Bayley  directed  a  nonsuit.  A 
motion  was  made  to  set  aside  that  nonsuit.  It  was  refused,  and  Lord  Tent- 
erden said,  the  patent  was  obtained  for  the  discovery  of  a  proper  conducting 
medium.     The  plaintiff  found,  after  repeated  trials,  that  nothing  would  serve 


»  Danson  <fc  Lloyd's  Rep.  33. 


THE    SPECIFICATION.  187 

the  purpose  except  the  cloth  described  in  the  specification  ;  yet  he  says  the 
cloth  may  be  made  "of  any  suitable  material," -and  merely  that  he  prefers 
the  particular  kind  there  mentioned.  Other  persons,  misled  by  the  terms  of 
this  specification,  may  be  induced  to  make  experiments  which  the 
patentee  knows  might  fail,  and  the  public  has  not  the  full  and  entire  benefit 
of  the  invention  ;  the  only  ground  on  which  the  patent  is  obtained.  But 
this  rule  must  not  be  extended  to  the  rudiments  of  a  science,  nor  to  the  mere 
incidents  of  a  subject.  If  gold  were  directed  to  be  used  in  a  stale  of  fusion, 
the  manner  and  utensils  for  putting  it  in  that  state  need  not  be  mentioned.' 

That  the  new  parts  of  the  subject  may  be  more  clearly  seen  and  easily 
known,  the  patentee  must  not  only  claim  neither  more  nor  less  than  his  own 
invention,  but  he  must  not  appear  even  unintentionally  to  appropriate  to  him- 
self any  part  which  is  old,  or  has  been  used  in  other  manufactures.''  Those 
parts  that  are  old  and  immaterial,  or  are  not  of  the  essence  of  the  invention, 
should  either  not  be  mentioned,  or  should  be  named  only  to  be  designated  as 
old.  The  patentee  is  not  required  to  say  that  a  screw  or  a  bobbin,  or  any- 
thing in  common  use  is  not  part  of  his  discovery  ;  yet  he  must  not  adopt  the 
invention  of  another  person,  however  insignificant  it  may  appear  to  be,  with- 


>  Turner  i;.  Winter,  1  T.  R.  602.    Gods,  on  Pat.  120. 

2  Huddartr.  Grimshaw,  Dav.  Pat.  Cas.  295.  Ellenborough,  C.  J.:  As  to  the  bob- 
bins they  are  not  worth  mentioning;  the  springs  and  tube  are  the  things  in  which  it 
should  seem  the  principal  originality  of  the  invention  consists.  Il  is  contended  that 
the  springs  are  not  an  essential  part  of  the  invention  ;  if  they  are  enrolled  as  an  essen- 
tial part,  whether  they  are  so  or  not,  it  would  certainly  go  to  destroy  this  patent, 
because  no  deceptive  things  are  to  be  held  out  to  the  public  ;  those  that  are  material 
are  to  be  held  out  as  material  ;  according  to  the  evidence  of  Mr.  Rennie,  they  are 
material.  It  appears  to  me  that  the  springs  in  Belfour  and  Huddart's  macliine  both 
produce  the  same  end  to  regulate  the  tension.  Now,  if  it  is  a  spring  to  regulate  the 
tension  of  the  yarn,  which  is  essential  to  be  regulated,  it  does  seem  to  me  ;  but  it  is 
for  your  judgment  to  say  whether  it  is  a  material  part  of  the  invention,  and  relied  upon 
as  such,  as  it  should  seem  il  is  by  both  ;  and  if  it  is  the  same,  then  that  which  has 
been  communicated  by  Mr.  Belfour  Mr.  Huddart  cannot  take  the  benefit  of 

It  is  for  you  to  say,  for  that  is  the  substance  of  the  case,  as  to  the  invention  of  the 
patent,  whether  any  essential  part  of  it  was  disclosed  to  the  public  before.  If  you  think 
the  same  effect  in  substance  is  produced,  and  that  the  springs  in  Mr.  Belfour's  by  pro- 
ducing tension,  obtains  a  material  end  in  the  making  of  ropes  in  this  way  proposed, 
and  that  it  is  in  substance  the  same  as  in  the  other,  this  patent  certainly  must,  upon 
principles  of  law,  fall  to  the  ground.  If  you  think  it  is  not  the  same,  or  if  you  think 
it  is  not  material,  though  we  have  had  the  evidence  of  Mr.  Rennie  upon  its  materiality ; 
if  you  think  this  patent  has  been  for  a  new  invention,  carried  into  effect  by  methods 
new  and  not  too  large  beyond  the  actual  invention  of  the  party,  in  that  case  the 
patent  may  be  sustained.  But  if  you  think  otherwise  iu  point  of  law  or  expediency, 
the  patent  cannot  be  sustained. 

The  verdint  was  for  the  plaintiff"  with  nominal  damages ;  but  it  is  evidently  at  vari- 
ance with  the  opinion  of  Lord  Ellenborough. 


188  LAW     OF     PATENTS. 

out  a  remark.  If  any  parts  are  described  as  essential  without  a  protest 
against  any  novelty  being  attached  to  them,  it  will  seem,  though  they  are 
old,  that  they  are  claimed  as  new.'  The  construction  will  be  against  the 
patentee  that  he  seeks  to  monopolize  more  than  he  has  invented,  or  that,  by 
dwelling  in  his  description  on  things  that  are  immaterial  or  known,  he 
endeavors  to  deceive  the  public,  who  are  not  to  be  deterred  from  using  anything 
that  is  old  by  its  appearing  in  the  specification  as  newly  invented.  They 
are  to  be  warned  against  infringing  on  the  rights  of  the  patentee,  but  are  not 
to  be  deprived  of  a  manufacture  which  they  before  possessed.'  It  seems, 
therefore,  to  be  the  safest  way  in  the  specification  to  describe  the  whole  sub- 
ject, and  then  to  point  out  all  the  parts  which  are  old  and  well  known. 

In  the  case  of  Campion  v.  Benyon,^  it  appeared  that  the  patent  was  taken 
out  "for  an  improved  method  of  making  sail-cloth,  without  any  starch 
whatever  "  The  improvement  or  discovery  consisted  in  a  new  mode  of  tex- 
ture, and  not  in  the  exclusion  of  starch;  and  the  advantage  of  excluding 
that  substance  had  been  discovered  and  made  public  before  that  time.  The 
court  held  that  the  patent  was  void,  as  claiming,  in  addition  to  what  the 
patentee  had  discovered,  the  invention  of  something  already  made  public. 
Mr.  Justice  Park  observed  ;  "In  the  patentee's  process,  he  tells  us  that  the 
necessity  of  using  starch  is  superseded,  and  mildew  thereby  entirely  pre- 
vented ;  but  if  he  meant  to  claim  as  his  own  an  improved  method  of  texture 
or  twisting  the  thread  to  be  applied  to  the  making  of  unstarched  cloth,  he 
might  have  guarded  himself  against  ambiguity  hy  disclaiming  as  his  own  dis- 
covery, the  advantage  of  excluding  starch." 

Upun  the  same  principles  of  reasoning,  but  certainly  with  much  more 
force,  if  there  be  several  things  specified  that  may  be  produced,  and  one  of 
them  is  not  new,  the  whole  patent  is  void.  This  point  underwent  a  very  full 
discussion  in  the  case  of  Brunton\.  Haiohes.* 

If  things  useless  and  unnecessary  have  been  mixed  with  a  substance,  or 
attached  to  a  machine,  though  the  terms  are  intelligible,  and  every  necessary 
description  has  been  introduced,  and  ihe  parts  claimed  are  only  those  which 
have  been  newly  invented,  the  patent  is  void.  Of  this  nature,  are  those 
parts  that  have  never  been  used  by  the  patentee.  It  is  from  that  circumstance 
inferred,  that  they  have  been  introduced  to  overload  the  subject,  and  by 
clouding  the  description,  to  mislead  the  public,  and  conceal  the  real  inven- 
tion.    Thus,  in  Arkwright's  machine,  the-  introduction  of  several  things,* 


1  Boville  V.  Moore,  Dav.  Pat.  Cas.  404  ;  and  see  Manton  v.  Parker,  Dav.  Pat. 
Cas.  329. 

'  Dav.  Pat.  Cas.  279,  and  3  Meriv.  629. 

3   3  B.  &  y.  5. 

*  4  Barn.  &  Aid.  550. 

6  Godson  on  Pat.  p.  29,  n. ;  and  see  Printed  Case,  182,  186,  187 ;  and  see  Dav.  Pat. 
Cas.  129,  139,  140  ;  also  Hill  v.  Thompson,  2  B.  Moore,  450. 


THE      SPECIFICATION.  189 

which  were  never  used  by  him,  was  considered  as  done  merely  to  mislead 
the  public. 

If  any  considerable  part  of  a  manufacture  be  unnecessary  to  produce  the 
desired  effect,  it  will  be  presumed  that  it  was  inserted  only  with  a  view  to 
perplex  and  embarrass  the  inquirer.  In  the  specification  to  Turner's  patent' 
for  producing  a  yellow  color,  among  other  things,  minium  is  directed  to  be 
used,  which  it  appeared  would  not  produce  the  desired  effect.  In  the  same 
case,  among  a  great  number  of  salts  which  were  specified,  it  was  left  to  the 
public  to  use  those  they  pleased,  without  either  of  them  in  particular  being 
pointed  out,  and  only  one  would  answer  the  intended  purpose.  For  either  of 
these  reasons,  the  validity  of  a  patent  could  be  impeached. 

This  rule,  that  if  any  considerable  part  of  the  things  described  in  the 
specification  be  unnecessary,  it  will  be  presumed  that  it  was  inserted  only 
with  a  view  to  perplex  and  embarrass  the  inquirer,  was  confirmed  by  the 
case  of  Savory  v.  Price. ^ 

That  patent  had  been  granted  for  a  method  of  making  a  neutral  salt  or 
powder,  possessing  all  the  properties  of  the  medicinnl  spring  at  Seidlitz, 
under  the  name  of  "  Seidiilz  Powder."  The  specification  enrolled  within 
the  time  required  by  the  patent,  set  out  three  distinct  recipes,  and  described 
the  modes  and  proportions  in  which  the  results  were  to  be  mixed,  in  order  to 
produce  the  "  Seidlitz  Powder."  It  was  proved  that  the  three  products  so 
mixed  answered  the  purpose  professed  in  the  patent,  and  that  the  combination 
was  nexo  and  useful.  But  upon  cross-examination  of  the  plaintiff's  witnesses, 
the  following  facts  were  established.  The  recipe  No.  1,  produced  the  sub- 
stance called  "  Rochelle  Salts."  Rochelle  salts  were  known  to  the  world 
before  1815  under  that  name,  and  also  as  Soda  Tartarizata. 

Recipe  No.  2,  produced  "  Carbonate  of  Soda,"  which  was  known  before 
1815,  and  was  in  the  Pharmacopoeia  of  1309  ;  and  a  more  expensive,  but 
more  perfect  way  of  making  it  was  also  known,  and  it  might  be  bought  in 
shops. 

The  recipe  No.  3,  produced  "  Tartaric  Acid,"  the  method  of  making 
which  was  known  at  the  time  of  the  patent,  and  under  that  or  some  other 
name,  it  might  be  bought  in  chemists'  shops;  and  other  methods  of  making 
it  were  known,  all  of  which  would  he  equally  efficacious  for  the  combination 
of  Seidlitz  Powders.  Rochelle  salts,  carbonate  of  soda,  and  tartaric  acid 
mixed  in  the  manner  prescribed,  produced  the  Seidlitz  Powders. 

The  Chief  Justice  said,  "  It  is  the  duty  of  any  one,  to  whom  a  patent  is 
granted,  to  point  out  in  his  specification  the  plainest  and  most  easy  way  of 
producing  that  for  which  he  claims  a  monopoly  ;  and  to  make  the  public 
acquainted  with  the  mode  which  he  himself  adopts.     If  a  person,  on  reading 


'  Turner  v.  Winter,  I  T.  R.  602  ;  Godson  on  Pat.  120. 
2  Ryan  &  Moody,  I. 


190  LAW    OF    PATENTS. 

the  specification,  would  be  led  to  suppose  a  laborious  process  necessary 
to  the  production  of  any  one  of  the  ingredients,  when,  in  fact,  he  might  go 
to  a  chemist's  shop  and  buy  the  same  thing  as  a  separate  simple  part  of 
the  compound,  the  public  are  misled.  If  the  results  of  the  recipes,  or  of 
any  one  of  them,  may  be  bought  in  shops,  this  specification,  tending  to  make 
people  believe  an  elaborate  process  essential  to  the  invention,  cannot  be 
supported." 

Although  the  unnecessary  part  had  occasionalhj  been  used,  it  would  still  be 
a  question  whether  it  had  not  been  put  there  to  mislead  the  public.  But 
this  rule  is  not  so  strictly  enforced  that  a  person  is  compelled  to  go  on  using 
every  part  of  his  invention  to  secure  and  continue  his  patent  right.  If  any 
particular  parts  have  been  once  fairly  introduced,  and  not  laid  aside,  until,  by 
some  discovery  or  contrivance  made  subsequent  to  the  date  of  the  patent, 
they  were  found  to  be  unnecessary,  the  patentee  may,  without  prejudice, 
leave  them  out ;  or  cease  to  make  use  of  them.  But  the  presumption  is 
against  the  inventor,  until  he  give  a  good  reason  for  the  discontinuance.' 

Watts,  in  his  specification,  gave  a  description  of  several  things,  which  being 
incomplete,  would  not  have  supported  a  patent ;  and  yet,  inasmuch  as  he 
did  not  claim  them  as  part  of  the  subject  of  his  patent,  it  was  considered 
that  they  were  matters  of  intention  only,  and  that  the  specification  was  noi 
rendered  less  intelligible  by  the  introduction  of  them.' 

It  is  absolutely  necessary  to  annex  to  the  specification  a  model,  diagram, 
picture,  or  drawing,  descriptive  of  the  manufacture.'  If  without  it  the  sub- 
ject is  clearly  described,  it  is  better  omitted.  It  is,  however,  an  easy  way 
of  illustrating  the  parts  of  a  machine,  and,  therefore,  has  generally  been 
adopted.  It  was  formerly  said,  that  in  every  instance  in  which  a  drawing 
was  introduced,  it  was  indispensable  that  it  should  be  drawn  on  a  scale, 
&c.  ;  *  that  in  it  the  diameters  of  wheels,  the  length  of  levers,  &c.,  every 
proportion  and  relation  of  the  parts,  ought  to  appear  in  due  ratio  to  each 
other ;  and  that  the  whole  should  be  capable  of  being  put  together  without 
leaving  the  length,  breadth,  or  relative  velocity,  of  any  of  the  parts  to  be 
found  out  by  conjecture  and  experiments,  or  the  patent  would  be  void. 
Arkwright's  machine,*  though  shown  in  a  perspective  drawing,  couUI  not  be 
made  for  want  of  a  scale  to  determine  its  dimensions. 

This  rule  has  of  late  been  modified.  If  a  common  mechanic  can  make 
the  subject  of  the  patent  from  the  drawing  in  perspective,  it  is  not  necessary 
that  there  should  be  a  scale.     It  was  also  formerly  considered  that  the  words 


'  Boville  V.  Moore,  Dav.  Pat.  Cas.  393. 

2  Boulton  V.  Bull,  2  Hen.  Bla.  480  ;  Dav.  Pat.  Cas.  187,  188. 

3  2  Hen.  Bla.  479  ;  Dav.  Pat.  Cas.  187 ;  and  see  Ex  parte  Fox,  1  Ves.  &  Beam.  67 

*  Harman  v.  Playne,  1 1  East  112;  14  Ves.  130,  S.  0. 

*  Kill  J  p.  Arkwright,  Printed  Cas.  176.    Dav.  Pat.  Cas.  114. 


THE     SPECIFICATION.  191 

of  the  specification  ought  of  themselves  to  be  sufEciently  descriptive  of  the 
improvement;  that  the  specification  ought  to  contain  within  itself  all  the 
necessary  information,  without  the  necessity  of  having  recourse  to  a  diagram, 
and  that,  if  a  diagram  were  given,  it  ought  to  be  taken  merely  as  an  illustra- 
tion, and  not  as  constituting  a  principal  or  essential  part  of  the  specification ; 
and,  therefore,  that  a  person  was  not  bound  to  look  at  the  diagram  to  learn 
the  invention.  But  a  very  learned  judge  has,  however,  held,  that  if  a  draw- 
ing or  figure  enable  a  workman  of  ordinary  skill  to  construct  the  improve- 
ment, it  is  as  good  as  any  written  description.' 

On  the  trial  at  nisi  prius,  it  was  objected  in  the  case  of  Bloxam  v.  Elsee* 
that  the  specification  was  bad,  because  there  were  several  words  in  it  not  in 
English  ;  such  as  vice  depression,  vice  repulsion,  and  vice  de  re-action,  for  dif- 
ferent screws;  and  the  French  word  chapitre,  for  a  cap,  also  occurred.  It 
was,  however,  proved,  that,  from  the  drawings  annexed  to  this  specification, 
a  skilful  mechanic  might  make  the  machine;  but  it  was  contended  tliat,  as 
a  specification  could  not  be  made  by  drawings  alone,  it  must  be  made  in  apt 
words,  intelligible  to  mechanics  ;  and  if  this  specification  were  held  good, 
everything  mentioned  in  a  specification  might  be  called  by  a  \u-ong  name,  and  . 
drawings  referred  to  for  the  whole.  Even  the  scale  appended  to  the  draw- 
ings was  a  scale  of  picds  and  pouces,  terms  unknown  to  English  mechanics. 

The  Lord  Chief  Justice  observed,  "  It  was  proved  that  the  names  to  the 
scale  were  quite  immaterial ;  for  relative  proportion,  which  was  all  that  was 
wanted,  the  scale  would  have  been  as  good  if  there  had  been  no  names  at  ail. 
An  inventor  of  a  machine  is  not  tied  down  to  make  such  a  specification  as, 
by  words  only,  would  enable  a  skilful  mechanic  to  make  the  machine,  but  he 
is  to  be  allowed  to  call  in  aid  the  drawings  which  he  annexes  to  the  specifi- 
cation ;  and  if,  by  a  comparison  of  the  words  and  the  drawings,  the  one 
would  explain  the  other  sufficiently  to  enable  a  skilful  mechanic  to  perform 
the  work,  such  a  specification  is  sufficient." 

The  consequences  which  attend  the  introduction  of  anything  into  the  spe- 
cification, merely  to  misguide  the  public,  have  been  mentioned.  The  means 
must  be  adapted  to  the  end.^  The  description  must  not  give  several  ivays 
and  methods  which  may  or  may  not  answer,  according  to  the  skill  exercised 
in  the  attempt  to  produce  the  manufacture.  Thus,  in  the  specification  of 
Winter's  patent,*  a  great  number  of  salts  were  mentioned,  by  which  it 
appeared  that  the  public  might  take  either  of  them  to  make  the  subjects  of 


'  Brunlon  v.  Hawkes,  37  Vol.  Rep.  of  Arts,  N.  S.  p.  105  ;  and  see  S.  C.  4  Barn.  6c 
Aid.  541  ;  1  Stark  N.  P.  C.  201,  and  Post. 

«  1  Car.  &  P.  558. 

3  Dav.  Pat.  Cas.  331.  And  see  Manton  v.  Parker,  Dav.  Pat.  Cas.  328.  2  B.  Moore, 
457,  458. 

«  Turner  v.  Winter,  I  T.  R.  602. 


192  LAW     OF     PATENTS. 

the  patent.  There  was  only  one  of  them  that  would  produce  the  effect,  and 
therefore,  his  patent  was  void.  Even  if  there  be  only  one  thing  which  will 
not  answer  the  intended  purpose,  the  specification  is  incorrect. 

Ill  Dcrosnev.  Fa'u-ie,^  the  specification  slated  a  method  of  depriving  syrups 
of  every  description,  of  color,  by  filtering  them  through  charcoal,  produced 
by  the  distillation  of  bituminous  schistus,  and  used  alone  or  mixed  with 
animal  charcoal,  or  even  through  animal  charcoal  alone  when  placed  in  thick 
beds.  It  appeared  that  iron  was  combined  with  the  bituminous  schistus  found 
in  this  country,  and  it  was  doubtful  whether  the  charcoal  distilled  from  the 
schistus  was  not  only  disadvantageous  but  injurious  to  the  matter  going 
through  the  process.  The  charcoal  sworn  to  have  answered  the  purpose"  of 
the  patent,  was  received  from  Derosne  at  Paris,  where  it  had  been  made, 
and  was  declared  by  him  to  be  the  residuum  of  bituminous  schistus,  from 
which  the  iron  had  been  extracted.  But  no  means  existed  of  ascertaining 
in  this  country,  of  what  substance  it  actually  was  the  residuum,  nor  did  the 
specification  mention  any  process  for  extracting  the  iron  from  bituminous 
schistus.  The  court  held,  that  whether  the  latter  omission  avoided  the 
patent  or  not,  tlje  patentee  ought  to  prove,  either  that  the  presence  of  iron 
in  the  bituminous  schistus  used  in  the  process  of  filtering,  was  not  absolutely 
disadvantageous  to  the  matter  going  through  that  process,  or  that  the  method 
of  extracting  the  iron  from  it  was  so  simple  and  known,  that  a  person  prac- 
tically acquainted  with  the  subject  could  accomplish  it  with  ease,  or  that 
bituminous  schistus,  as  known  in  England,  could  be  used  in  this  process 
with  advantage  ;  and  a  verdict  having  been  found  for  the  plaintiff,  the  court 
set  it  aside  on  terms,  and  granted  a  new  trial.* 

Not  only  must  there  not  be  any  unnecessary  means  mentioned  in  the  speci- 
fication, but  effects  that  cannot  accurately  be  produced  must  not  be  mentioned 
and  described.  The  patentee  s'lould  inform  the  inquirer  of  the  exact  nature 
of  the  manufacture  invented.  If  the  article  described  have  not  the  qualities, 
or  the  machine  produce  not  the  results  which  are  set  forth  in  the  specifica- 
tion, the  grant  is  invalid.' 

'  Dernsne  v.  Fairie  and  others,  5  Tyr.  Rep.  393. 

2  There  was  not  any  further  litigation,  but  the  patentee  disclaimed  the  use  of  bitu- 
minous schistus. 

3  See  Haworth  v.  Hardcastle,  1  Bing.  N.  C.    1822. 

Tindal,  C.  J.  "  The  motion  for  enlering^  a  nonsuit  was  grounded  on  two  points. 
First,  that  the  jury  had,  hy  their  special  finding,  negatived  the  usefulness  of  the  inven- 
tion 10  the  full  extent  of  what  the  patent  and  specification  had  held  out  to  the  public. 
Secondly,  that  the  patentee  had  claimed  in  his  specificaiion,  the  invention  of  ihe  rails 
of  staves  over  which  the  cloths  were  hung,  or,  at  all  events,  the  placing  them  in  a  tier 
at  the  upper  part  of  the  drying  room." 

As  to  the  finding  of  the  jury,  it  was  in  these  words  :  "  The  jury  find  the  invention  is 
new,  and  useful  upon  the  whole,  and  that  the  specification  is  sufficient  for  a  mechanic, 
properly  instructed,  to  make  a  machine  ;  and  that  there  has  been  an  infringement  of 


THE    SPECIFICATION.  193 

Such  is  the  law  too,  if  the  patentee  take  his  grant  for  the  invention  of 
several  things,  and  he  fail  in  any  one  of  them.  By  Winter's  invention  '  three 
ihings  were  to  be  produced  ;  one  reason  for  its  being  considered  void  was, 
that  the  second  article,  which  was  called  in  the  patent  "  white  lead,"  was 
in  fact,  quite  a  different  substance,  and  which  could  be  used  only  for  a  very 
few  of  the  purposes  for  which  common  white  lead  is  applied.  Bainbridge's 
patent^  for  the  improvement  of  the  hautboy  was  for  new  notes,  in  the  plural 
number.  On  proof,  it  appeared  that  he  had  only  found  out  one  new  note, 
and  he  consequently  failed  in  an  action  of  damages  for  an  infringement  of  the 
grant,  although  great  ingenuity  had  been  exerted,  and  the  fingering  was  ren- 
dered less  complicated  by  the  invention. 

In  the  case  of  Lewis  v.  Marling,^  a  most  important  point  was  settled.  A 
patent  was  granted  for  improvements  on  shearing  machines,  for  shearing  or 
cropping  woolen  and  other  cloths.  The  patentees  in  their  specification 
claimed,  (amongst  other  things)  "  the  application  of  a  proper  substance 
fixed  on  or  in  the  cylinder  to  brush  the  surface  of  the  cloth  to  be  shorn." 
The  brush  for  the  surface  of  the  cloth  was  soon  found  to  be  useless,  and  the 
patentees  never  sold  any  machines  with  it. 

The  Court  decided  that  if  the  patent  be  granted  for  several  things,  one  of 


the  patent;  hut  they  also  find  that  the  machine  is  not  useful  in  some  cases  for  taking 
up  goods." 

The  specification  must  he  admitted,  as  it  appears  to  us,  to  describe  the  invention  to 
be  adapted  to  perform  the  operation  of  removing  the  calicoes  and  other  cloths  from  oflT 
the  rails  or  staves,  after  they  have  heen  sufficiently  dried.  But  we  think  we  are  not 
warranted  in  drawing  so  strict  a  conclusion  from  this  finding  of  the  jury,  so  as  to  hold 
that  they  have  intended  to  negative,  or  that  they  have  thereby  negatived,  that  the 
machine  was  not  useful,  in  the  generality  of  the  cases  which  occur  for  that  purpose. 
.\fter  slating  that  the  machine  was  useful  on  the  whole,  the  expression  that  in  some 
cases,  it  is  not  useful  to  take  up  the  cloths,  appears  to  us,  to  lead  rather  to  the  infer- 
ence, that,  in  the  generality  of  cases,  it  is  found  useful.  And  if  the  jury  think  it 
useful  in  the  general,  because  some  cases  occur  in  which  it  does  not  answer,  we  think 
it  would  be  much  too  strong  a  conclusion  to  hold  the  patent  void.  How  many  cases 
occur,  what  proportion  they  bear  to  those  in  which  the  machine  is  useful,  whether  the 
instances  in  which  it  is  found  not  to  answer  are  to  be  referred  to  the  species  of  cloth 
which  are  hung  out,  to  the  mode  of  dressing  the  cloths,  to  the  thickness  of  them,  or  to 
any  other  cause  distinct  and  different  from  the  defective  structure,  or  want  of  power  in 
the  machine,  this  finding  of  the  jury  gives  us  no  information  whatever.  Upon  such  a 
finding,  therefore,  in  a  case  where  the  jury  have  given  their  general  verdict  for  the 
plaintiff,  we  think  that  we  should  act  with  great  hazard  and  precipitation  if  we  were 
to  hold  that  the  plaintiff  ought  to  be  nonsuited,  upon  the  ground  that  his  machine  was 
altogether  useless  for  one  of  the  purposes  described  in  his  specification. 

'  Turner  v.  Winter,  1  T.  R.  602. 

2  Bainbridge  v.  Wigley,  K.  B.  Dec.  1810;  and  see  Brunton  ».  Hawkes,  4  Barn.  & 
Aid.  451. 

*  10  Barn.  &  Cress.  22. 

17 


194  LAW    OF     PATENTS. 

which  is  supposed  (at  ihe  time  of  enrolling  the  specification,)  to  be  useful, 
but  is  afterwards  found  not  to  be  so,  yet  the  grant  is  good  in  law.  The 
opinions  of  the  judges  are  very  excellent. 

Lord  Tenlerden  observed,  "  As  to  the  objection  on  the  ground  that  the 
application  of  a  brush  was  claimed  as  a  part  of  the  invention,  adverting  to 
the  specification,  it  does  not  appear  that  the  patentee  says  the  brush  is  an 
essential  part  of  the  machine,  although  he  claims  it  as  an  invention.  When 
the  plaintiffs  applitd  for  the  patent,  they  had  made  a  machine  to  which  the 
brush  was  affixed,  but  before  any  machine  was  made  for  sale,  they  discov- 
ered it  to  be  unnecessary.  I  agree,  that  if  the  patentee  mentions  that  as  an 
essential  ingredient  in  the  patent  article,  which  is  not  so,  nor  even  useful, 
and  whereby  he  misleads  the  public,  his  patent  may  be  void  ;  but  it  would 
be  very  hard  to  say  that  this  patent  should  be  void,  because  the  plaintiffs 
claim  to  be  the  inventors  of  a  certain  part  of  the  machine  not  described  as 
essential,  and  which  turns  out  not  to  be  useful.  Several  of  the  cases 
already  decided  have  borne  hardly  on  patentees,  but  no  case  has  hitherto 
aone  the  length  of  deciding  that  such  a  claim  renders  a  patent  void,  nor  am 
I  disposed  to  make  such  a  precedent." 

Mr.  Justice  Bayley  said,  "  I  am  of  the  same  opinion.  To  support  a  patent, 
it  is  necessary  that  the  specification  should  make  a  full  and  fair  disclosure  to 
the  public  of  all  that  is  known  to  the  patentee  respecting  his  invention.  If 
it  does  not,  the  consideration  on  which  he  obtains  his  patent  fails.  If  he 
represents  several  things  as  competent  to  produce  a  specific  effect,  when  only 
one  will  answer,  that  is  bad  ;  or  if  he  suppresses  anything  which  he  knows 
will  answer,  that  also  is  bad.  But  it  is  objected  here,  that  the  plaintiffs  de- 
scribed the  application  of  the  brush  as  parcel  of  their  discovery.  At  the 
time  when  the  patent  was  obtained,  a  brush  was  used,  and  there  is  no  reason 
to  doubt  that  the  plaintiffs  at  that  time  thought  it  necessary." 

Mr.  Justice  Parke.  "The  objection  to  the  patent  as  explained  by  the 
specification  may  be  thus  stated  ;  the  patent  is  for  several  things,  one  of 
which,  being  supposed  to  be  useful  is  now  found  not  to  be  so  ;  but  there  is 
no  ca£e  deciding  that  a  patent  is  on  that  ground  void,  although  cases  have 
gone  the  length  of  deciding,  that  if  a  patent  be  granted  for  three  things,  and 
one  of  them  is  not  new,  it  fails  in  toto.  The  prerogative  of  the  crown  as  to 
granting  patents,  was  restrained  by  the  statute,  21  Jac.  1,  c.  3,  ^  6,  to  cases 
of  grants,  '  to  the  true  and  first  inventors  of  manufactures,  which  others  at 
the  time  of  granting  the  patent  shall  not  use.'  The  condition,  therefore,  is, 
that  the  thing  shall  be  new,  not  that  it  shall  be  useful;  and  although  the 
question  of  its  utility  has  been  sometimes  left  to  a  jury,  I  think  the  condition 
imposed  by  the  statute  has  been  complied  with,  when  it  has  been  proved  to 
be  new." 

Although  the  description  may  be  otherwise  complete  and  correct,  although 
the  means  may  be  adapted  to  the  end,  and  the  things  specified  be  produced  ; 


THE    SPECIFICATION.  195 

yet,  if  the  subject  be  not  given  to  the  public  in  the  best  and  most  improvrd 
state  known  to  the  inventor,  the  patent  is  void.  If,  at  the  time  of  obtaining 
the  grant,  he  was  acquainted  with  a  mode  of  making  his  manufacture  more 
beneficial  than  by  the  one  specified,  the  concealment  will  be  considered  fraud- 
ulent. Thus,  Lord  Mansfield  held  a  patent  for  "steel  trusses"  to  be  void, 
because  the  inventor  had  omitted  to  mention  that  in  tempering  the  steel,  he 
rubbed  it  with  tallow,  which  was  of  some  use  in  the  operation.' 

In  the  specification  for  a  patent  for  making  verdigris,"  aqua  fortis,  which 
was  used  by  the  inventor,  was  not  mentioned.  It  appeared  that  the  patentee 
mixed  the  aqua  fortis,  with  great  secrecy,  which  raised  the  presumption  that 
he  knew  of  its  value  when  the  grant  was  sealed.  The  patent  was,  there- 
fore, declared  to  be  void. 

Nor  can  any  alteration,  known  to  the  inventor  before  he  procures  the 
patent,  be  made,  however  insignificant  it  may  be,  even  if  it  were  nothing 
more  than  the  means  of  working  the  machine  a  little  more  expeditiously, 
without  raising  a  presumption  that  the  patentee  fraudulently  concealed  the 
best  method.  A  lace  machine,^  for  which  Mr.  Boville  had  obtained  a  patent 
was  worked  wilh  greater  expedition  by  bending  together  two  teeth  of  the 
dividers,  or  by  making  one  longer  than  the  others,  than  if  it  were  used  as 


>  Liardet  v.  Johnson,  Bull.  N.  P.  76  ;  and  see  1  T.  R.  60S. 

2  Wood  and  Others  v.  Zimmer  and  Others,  1  Holt,  58.  Gibbs,  C.  J.  It  is  said  that 
this  patent  makes  verdigris,  and  is,  therefore,  sufficient.  The  law  is  not  so.  A  man 
who  applies  for  a  patent,  and  possesses  a  mode  of  carrying  on  that  invention  in  the 
most  beneficial  manner,  must  disclose  the  means  of  producing  it  in  equal  perfection, 
and  wilh  as  little  expense  and  labor  as  it  costs  the  inventor  himself. 

The  price  that  he  pays  for  his  patent  is,  that  he  will  enable  the  public,  at  the  expi- 
ration of  his  privilege,  to  make  it  in  the  same  way,  and  with  the  same  advantages. 
If  anything  which  gives  an  advantageous  operation  to  the  thing  invented  be  concealed, 
the  specification  is  void.  Now,  though  the  specification  should  enable  a  person  to 
make  verdigris  substantially  as  good  without  aqua  fortis,  as  with  it ;  still,  inasmuch 
as  it  would  be  made  with  more  labor  by  the  omission  of  aqua  fortis,  it  is  a  prejudicial 
concealment,  and  a  breach  of  the  terms  which  the  patentee  makes  with  the  public. 

s  Boville  V.  Moore,  Dav.  Pat.  Cas.  400.  Gibbs,  C.  J.  There  is  another  considera- 
tion respecting  the  specification,  which  is  also  a  material  one  ;  and  that  is,  whether 
the  patentee  has  given  a  full  specification  of  his  invention;  not  only  one  that  will  ena- 
ble a  workman  to  construct  a  machine  answerable  to  the  patent,  to  the  extent  most 
beneficial  within  knowledge  of  the  patentee  at  the  time  ;  for  a  patentee,  who  has 
invented  a  machine  useful  to  the  public,  and  can  construct  it  in  one  way  more  exten- 
sive in  its  benefit  than  in  another,  and  states  in  his  specification  only  that  mode  which 
would  be  least  beneficial,  reserving  lo  himself  the  more  beneficial  mode  of  practising 
it,  although  he  will  have  so  far  answered  the  patent  as  to  describe  in  his  specification 
a  machine  to  which  the  patent  extends ;  yet  he  will  not  have  satisfied  the  law,  by 
communicating  to  the  public  the  most  beneficial  mode  he  was  then  possessed  of  for 
exercising  the  privilege  granted  lo  him.  And  see  Brown  v.  Moore,  Rep.  of  Arts,  2Sth 
vol.  p.  60. 


jyg  LAW     OF     PATENTS. 

Bpecified.  This  mode  of  using  it  was  known  to  the  inventor  before  he 
obtained  the  patent ;  and,  therefore,  Gibbs,  C.  J.  thought  that  the  patent  was 
bad  on  that  account. 

If  the  patentee  use  cheaper  material  in  making  the  manufacture  than  those 
he  has  enumerated,  his  grant  will  not  be  sustained  by  his  proving  that  the 
articles  specified  will  answer  the  purpose  as  well.' 

It  signifies  not  in  what  manner  this  advantage  accrues  to  the  patentee  ;  it 
is  not  necessary  that  any  palpable  alteration  has  taken  place  ;  that  something 
has  been  added  or  something  taken  away  from  the  invention  as  specified,  to 
render  the  patent  void  ;  it  will  be  invalid,  if  bij  any  means  whatever  a  benefit 
is  derived  by  the  patentee,  which  was  concealed  from  the  public  at  the  time 
the  patent  was  obtained,  even  if  it  be  merely  a  small  part  of  a  machine  on 
which  a  particular  motion  is  impressed  at  a  given  moment  in  a  particular 

direction,* 

If  this  improved  manner  of  using  the  invention  be  unintentionalhj  left 
undescribed,  still  the  patent  is  void.  "If  it  was  inadvertent,"  says  Gibbs, 
C.  J.,  speaking  of  Boville's  omission  in  not  describing  the  bending  of  the 
teeth  "  if  he  actually  knew  and  meant  to  practise  that  mode,  and  inad- 
vertently did  not  stale  the  whole  in  his  specification,  he  must  answer  for  his 
inadvertence."  ^ 

But  if  it  appear  that  this  better  mode  of  using  the  manufacture  be  a 
subsequent  discovery;  that  the  patentee  has  since  the  date  of  the  grant  found 
out  this  new  means  of  carrying  on  his  own  invention  to  a  better  effect ;  then 
the  grant  will  continue  valid  ;  *  but,  as  before  stated,  the  presumption  of 
concealment  will  be  against  him. 

Another  important  rule  of  law  was  established  in  the  case  of  Crosslcy  v. 
Beverley ^     Mr.  Clegg,  the  patentee,  had  a  grant  for  an  improved  gas  appa- 


>  1  T.  R.  607;  1  Holt's  N.  P.  C.  60  ;  King  v.  Wheeler,  2  Barn.  &  Aid.  345. 

2  King  V.  Arkwright,  Printed  Cases,  50.  The  cylinder  in  the  specification  was  a 
parallel  one  ;  but  that  which  was  used,  spiral. 

3  Buville  v.  Moore,  Dav.  Pat.  Cas.  413.  Gibbs,  C.  J.,  observed  to  the  jury,  You  will 
say  whether  you  think  there  is  any  fraudulent  concealment  in  the  specification.  A 
juryman:  It  might  he  inadvertent,  and  not  fraudulent.  Gibbs,  C.  J. :  Certainly  ;  and 
if  it  were  inadvertent ;  if  he  actually  knew  and  meant  to  practise  that  mode,  and  inad- 
verlenlly  did  not  state  the  whole  in  his  specification,  he  must  answer  for  his  inadver- 
tence ;  but  it  might  be  a  subsequent  discovery.    Verdict  for  the  defendant. 

••  Boville  v.  Moore,  Dav.  Pat.  Cas.  401.  Gibbs,  C.  J.:  If  Mr.  Brown,  since  he 
obtained  his  patent,  had  discovered  an  improvement,  effected  by  bending  the  teeth  or 
adding  a  longer  tooth,  he  might  apply  that  improvement ;  and  his  patent  will  not  be 
affected  by  his  using  his  own  machine  in  that  improved  state  ;  but  if,  at  the  time  he 
obtained  his  patent,  he  was  apprized  of  this  more  beneficial  mode  of  working,  and  did 
not  by  his  specification  communicate  it  to  the  public,  that  must  be  considered  as  a 
fraudulent  concealment,  although  it  was  done  inadvertently,  and  wiH  render  the 
patent  void. 
*  9  Birn.  &c  Cress.  63. 


THE    SPECIFICATION.  197 

ratus,  and  he  claimed  a  gas  meter  (or  part  of  it)  as  described  ia  the  specifi- 
cation. It  appeared,  on  the  examination  of  Mr.  Clegg  himself,  that  he  had 
invented  the  method  of  making  the  gas  meter,  as  described  in  the  specifica- 
tion, in  the  time  between  the  dates  of  the  patent  and  the  specification.  Before 
he  took  out  the  patent  he  had  completed  the  design  of  the  meter,  but  he  had 
not  actually  made  one,  and  he  found  several  improvements  upon  it  before  he 
sent  in  his  specification,  in  which  he  described  the  meter  so  improved  as  the 
invention  claimed  by  him.  The  court  was  clearly  of  opinion  the  patent  was 
valid  in  law,  and  Lord  Tenterden  observed  that  he  was  at  a  loss  to  know 
upon  and  for  what  reason  a  patentee  is  allowed  time  to  disclose  his  invention, 
unless  it  be  for  the  purpose  of  enabling  him  to  bring  it  to  perfection.  If, 
added  liis  lordship,  in  the  intermediate  time  another  person  were  to  discover 
the  improvements  for  so  much  of  the  machine,  the  patent  would  not  be 
a-vailable.  But  Mr.  Justice  Bayley  said,  "  It  is  the  duty  of  a  person  taking 
out  a  patent  to  communicate  to  the  public  any  improvement  that  he  may 
make  upon  his  invention  before  the  specification  has  been  enrolled." 

Upon  these  grounds  and  for  these  reasons,  applicable  to  the  specifications 
of  almost  all  kinds  of  manufactures,  many  patents  have  been  declared  to  be 
void.  The  inventor  bearing  them  in  mind,  and  attending  to  the  nature  of 
each  kind  of  manufacture,  whether  it  be  a  substance  or  machine,  &c.,  as  it 
is  distinguished  from  the  rest  in  the  last  chapter,  will  be  able,  by  avoiding 
similar  errors,  to  make  a  correct  specification  for  any  invention.  Indeed,  no 
farther  assistance  can  be  given  to  him  than  that  which  may  be  derived  from 
a  few  general  observations  on  the  description  peculiar  to  each  manufacture. 

The  description  of  a  machine  must  disclose  the  nature  of  the  invention, 
and  the  manner  in  which  it  is  to  be  performed.  It  must  be  minute  without 
perplexity,  and  luminous  without  being  overwrought.  When  it  descends  to  par- 
ticulars, the  elements  that  are  known  to  all  should  not  be  noticed ;  nor  yet, 
in  its  fulness,  should  anything  be  included  that  is  not  necessary  to  render  it 
intelligible.  It  should  be  such  that  a  common  mechanic,  with  a  reasonable 
degree  of  skill  upon  the  subject,  may  comprehend  it.  Though  it  need  not  be 
so  full  as  to  instruct  a  person  ignorant  of  the  first  principles  of  mechanics  in 
the  method  of  its  formation  and  use;  yet,  on  the  other  hand,  a  person  emi- 
nently skilled  in  the  subject  must  not  be  required  to  make  it.  A  reasonable 
knowledge  and  skill  (of  which  the  jury  decide)  must  be  possessed  by  the 
person  who  complains  that  the  specification  is  obscure,  and  that  he  cannot 
make  the  machine.  No  contrivance  or  addition,  no  trial  or  experiment,  it  is 
said,  must  be  resorted  to  for  a  full  knowledge  of  the  invention.'  This  rule 
must,  however,  be  taken  in  a  limited  sense.  Though  no  inventive  faculty 
must  be  exercised,  nor  anything  new  added,  yet  trials,  if  they  are  not  essen- 
tially necessary,  may  be  made.     If  the  inventor  leave  anything  to  be  found 


1  2  Hen.  Bla.  484. 
17* 


198 


LAW     OF     PATENTS. 


out  by  experiment,  the  specification  is  bad  ;  unless  the  data,  manner  of  per- 
forming, and  the  expected  results  are  so  clearly  given,  that  it  may  easily  be 

done.  TIL 

Reference  may  be  made  to  the  rudiments  of  that  science  by  which  the 
principles  of  the  machine  are  explained,  but  not  to  scientific  books.*  A  pro- 
position,  or  truth  generally  known,  needs  no  reference;  and  that  which  can 
be  found  only  in  some  particular  treatise  must  be  explained,  but  not  claimed 

as  new. 

If  a  piece  of  machinery  be  contemplated  for  the  purpose  of  giving  a  full 
description  of  it,  the  several  parts,  as  wheels,  rollers,  screws,  springs,  &c., 
&c.,  must  be  set  forth,  together  with  the  proportion  of  their  diameters, 
thickness,  tension,  Ac."  Then  the  method  by  which  they  are  united,  and 
the  relative  velocities  of  the  movable  parts.' 

If  the  thing  specified  be  the  component  parts  of  two  machines,  the  union 
of  the  parts  that  make  up  each  of  them  must  be  clearly  shown.*  If  parts  of 
the  machine  are  to  be  put  on  and  off  during  some  of  its  operations,  in  order 
to  produce  the  desired  effect,  or  if  several  articles  are  intended  to  be  worked 
on,  or  several  manufactures  to  be  produced,  it  must  be  distinctly  stated 
what  those  parts  are,  their  proportions  for  different  purposes,  and  where  they 
are  to  be  applied.* 

It  has  been  shown  that  the  grant  must  not  be  more  extensive  than 
the  invention  ;«  and  that  where  the  patent  is  for  an  improvement  or  addition, 
the  inventor  cannot  monopolize  the  whole  subject.  The  specification  will, 
therefore,  be  incorrect,  if  it  contain  a  description  of  more  than  the  improve- 
ment or  addition  ;  '  unless  it  particularly  distinguish  the  new  from  the  old 
parts. 

The  inventor  is  not  bound  down  to  any  particular  mode  of  describing  his 
improvement,  so  that  he  informs  the  public  exactly  in  what  his  invention  con- 
sists. He  may  describe  it  by  vjords,  or  by  diagrams,^  but  he  must  confine 
himself  to  his  invention. 


>  11  East,  105. 

"  King  V.  Arkwright,  Printed  Cas.  17-1 ;  Dav.  Pat.  Cas.  111. 

3  Id.  Printed  Cas.  62,  179  ;  Dav.  Fat.  Cas.  122. 

*  Id.  Printed  Cas.  174  and  177;  Dav.  Pat.  Cas.  HI  and  117. 
"  Ibid. 

*  Godson  on  Pat.  59. 

1  Bramah  v.  Hardcastle,  MSS.  post,  156  ;  and  Williams  v.  Brodie,  cited  by  counsel 
in  King  v.  Arhcright,  Printed  Cas.  162. 

8  McFarland  v.  Price,  1  Stark,  199.  Action  for  infringement.  The  patent  was  for 
certain  improvements  in  the  making  of  umbrellas  and  parasols.  The  specification 
professed  to  set  out  the  improvements  as  specified  in  certain  descriptions  and  draw- 
ings annexe<i ;  but  no  distinction  was  made,  either  in  the  description,  or  by  any  marks 
in  the  drawings,  between  what  was  new  and  what  was  old. 

Elleriborough,  C.  J.    The  patentee,  in  his  specification,  ought  to  inform  the  person 


THE    SPECIFICATION. 


199 


The  patent  for  the  improvement  of  a  thing,  or  for  the  thing  improved,  is 
in  essence  for  the  same  manufacture.*  The  inventor  may  either  accurately 
describe  the  addition,  and  then  point  out  the  method  by  which  it  is  applied 
to  the  known  parts;  or  he  may  describe  the  whole  as  one  machine,  and  then 
particularize  the  parts  newly  discovered. 

It  is  not  absolutely  necessary  that  the  old  parts  should  be  described.  They 
may  be  referred  to  generally,  if  the  whole  is  not  thereby  rendered  unintelli- 
gible. Thus,  in  Jessop's  case,*  whose  invention  consisted  of  a  single  move- 
ment in  a  watch,  it  was  said  to  be  sufficient  to  refer  generally  to  a  common 
watch,  and  then  to  give  directions  how  the  new  part  was  to  be  added  to  it. 
There  is  one  decision  on  an  improvement  which  appears  to  be  an  anomaly. 
Harmar'  obtained  a  patent  for  a  machine.     Having  very  much  improved  it 


who  consults  it  what  is  new  and  what  is  old.  The  specification  states  that  the 
improved  instrument  is  made  in  manner  following.  That  it  is  not  true,  shice  the 
description  comprises  what  isold  as  well  as  what  is  new.  Then  it  is  said,  that  the 
patentee  may  put  in  aid  the  figures.  But  how  can  it  be  collected  from  the  whole  of 
these,  in  what  the  improvement  consists  ? 

1  2  Hen.  Bla.  481,482. 

2  2  Hen.  Bla.  489. 

3  Harmarv.  Plagxie,  11  East,  101. 

The  patent  was  for  "  a  machine  invented  for  raising  a  shag  on  all  sorts  of  woollen 
cloths,  and  cropping  or  shearing  them,  which  together  come  under  the  description  of 
dressing  woollen  cloths,  and  also  for  cropping  or  shearing  of  fustian."  There  were 
drawings  of  the  machine.  Harmar  afterwards  invented  some  improvement  of  his 
machine,  for  which  he  prayed  a  patent  ;  which  patent  was  granted  upon  the  usual  con- 
dition, that  he  should  ascertain  the  nature  of  the  said  invention  or  the  said  improve- 
ments. The  second  specification  recited  the  first  patent,  and  described  the  w/wle  of 
the  machine,  without  showing  in  words,  or  marking  in  the  drawing  where  the  first 
miachine  ended,  or  from  what  point  the  improvements  began.  The  improvement  could 
only  appear  hy  comparing  together  the  two  specifications.  It  was  contended  for  the 
plaintiff,  that  the  patent  and  specification  referring  to  it  are  to  he  construed  together 
as  one  instrument.  The  first  patent  being  enrolled,  the  pulilic  were  bound  to  take 
notice  of  it ;  and  being  recited  in  the  second,  the  improvements  easily  appeared  by 
comparing  them.  That  it  was  more  convenient  to  give  a  description  of  the  whole, 
than  by  a  literal  compliance  to  state  what  the  improvements  were 

For  the  defendant  it  was  said,  that  improvements  should  be  distinctly  marked  and 
made  known  by  this  second  specification  alone,  without  further  search  or  trouble. 

Le  Blanc,  J.  Suppose  the  specification  had  merely  described  the  improvements, 
must  not  the  party  still  have  referred  to  the  original  specification,  or  at  least  have 
brought  a  full  knowledge  of  it  with  him,  before  he  could  understand  truly  to  adapt  the 
new  parts  described  to  the  old  machine? 

Elleuborough,  J.  It  would  lead  to  great  inconvenience,  if  books  of  science  were 
allowed  to  be  referred  to.  A  person  ought  to  tell  from  the  specification  itself  what  the 
invention  was  for  which  the  specification  was  granted,  and  how  it  is  to  be  executed. 
If  reference  may  he  made  to  one  why  not  to  many  works?  It  may  not  be  necessary, 
indeed,  in  stating  a  specification  of  a  patent  for  an  improvement,  to  stale  precisely 


200  LAW    OF    PATENTS. 

he  procured  another  patent,  in  which  the  first  was  recited.  In  the  second 
specification,  withdut  any  reference  being  made  to  the  description  of  the  for- 
mer subject,  the  whole  machine  so  improved  was  set  forth,  without  the  new 
pans  being  distinguished  from  the  old  ones.  The  second  grant  was  held  to 
be  good,  because  the  second  patent,  by  reciting  the  first,  referred  to  its  speci- 
fication, which  by  the  enrolment  was  matter  of  record,  and  therefore  supposed 
to  be  within  every  person's  knowledge. 

It  must  be  here  observed  that  Harmar  referred  to  his  own  patent.  It 
seems,  by  the  same  reasoning,  that  it  might  be  laid  down  as  a  general  rule, 
that  every  person,  making  a  manufacture  from  the  subjects  of  several  expired 
patents,  might  recite  and  refer  to  the  specifications  of  them,  without  taking 
any  notice  of  tiieir  contents. 

Sometimes  it  is  difficult  to  determine,  whether  the  improvements  be  an 
addition  of  new  parts,  properly  so  called,  or  the  parts  of  an  old  machine 
newly  arranged  with  some  material  alteration.  In  the  latter  case  it  is  safer 
to  claim  the  whole  as  a  new  engine  ;  and  then  in  the  specification  to  dis- 
tinguish accurately  between  the  old  and  new  manufacture,  showing  the 
peculiar  qualities  of  each,  the  improvement  effected,  the  means  that  pro- 
duced it,  and  the  use  to  which  it  is  to  be  applied.  From  these  decisions  it 
appears  that  there  are  several  ways  of  making  a  correct  specification  of  an 
improvement. 

First.  By  describing  the  whole  ihanufacture,  and  then  particularizing 
with  great  exactness  the  addition  or  improvement  of  the  inventor.' 

Secondly.  By  a  description  of  the  whole  manufacture,  pointing  out  the 
parts  that  either  are  old  or  not  material  to  the  invention. 

Thirdly.  By  giving  an  accurate  and  intelligent  description  of  the 
improvement,  and  the  manner  in  which  it  is  applied  to  the  subject,  or  parts 
that  are  old. 

Fourthly.  By  describing  the  whole  manufacture,  if  it  be  an  improvement 
of  another  for  which  a  patent  has  been  obtained,  taking  care  to  refer  in  the 
new  specification  to  that  of  the  former  patent. 

The  observations  of  the  court,  in  Minter  v.  Mower^  are  worthy  of  atten- 


all  the  former  known  parts  of  the  machine,  and  then  to  apply  to  those  the  improve- 
ment ;  but  on  many  occasions  it  may  be  sufficient  to  refer  generally.  But,  however,  I 
feel  impressed  by  the  observation  of  my  brother  Le  Blanc,  that  the  trouble  and  labor 
of  referring  to  and  comparing  the  former  specification  would  be  fully  as  great  if  the 
patentee  only  described  in  this  the  precise  improvements  of  the  former  machine.  Re- 
ference may  be  made  to  general  science.  The  court  certified  to  the  Lord  Chancellor 
in  favor  of  the  specification. 

»  In  Bramah  v.  Hardcastle,  before  Lord  Kenyon,  1789,  the  inventor  did  not  distin- 
guish the  part  he  really  invented  from  the  parts  that  were  old  in  his  new  water- 
closet. 

«  Mlrder  v.  Mower,  6  Add.  &  Ell.  Rep.  735. 


THE    SPECIFICATION.  201 

lion,  in  drawing  a  specification  of  a  machine.  In  the  specification  the  inven- 
tion was  described  to  be  of  "  An  improvement  in  the  construction,  making, 
or  manufacturing  of  chairs,"  and  to  consist  in  the  application  of  a  self-adjust- 
ing leverage  to  the  back  and  seat  of  a  chair,  whereby  the  weight  on  the  seat 
acted  as  a  counterbalance  to  the  pressure  against  the  back,  and  whereby  a 
person  sitting  in  the  chair,  might,  by  pressing  against  the  back,  cause  it  to 
take  any  inclination,  and  yet  might  be  supported.  In  an  action  for  infring- 
ing the  patent,  it  was  pleaded  that  the  specification  did  not  describe  the 
invention.  It  was  proved  that  a  chair  had  previously  been  sold,  to  which  a 
similar  leverage  was  applied,  acting  by  the  pressure  in  the  same  way, 
but  having  also  other  machinery  which  prevented  the  inclination  of  the  back 
from  being  shifted,  except  when  a  spring  was  touched  by  the  hand.  The 
jury  found,  that  without  such  other  machinery,  the  chair  previously  sold 
would  have  produced  an  equilibrium  by  the  self-adjusting  leverage ;  that  the 
maker  of  it  was  the  inventor  of  the  machine,  and  found  out  the  principle, 
but  not  the  practical  purpose  to  which  it  was  now  applied  ;  and  that  the 
plaintiflf  had  discovered  such  purpose. 

Lord  Denman,  ordering  a  nonsuit,  thus  delivered  the  judgment  of  the 
court.  "An  action  between  the  same  parties  has  already  been  decided  by 
the  court  of  exchequer,  in  which  the  patent  claimed  by  the  plaintiflf  was 
deemed  good  and  valid.  But,  on  the  trial  in  this  court,  an  entirely  new  fact 
was  given  in  evidence,  and  affirmed  by  the  verdict  of  the  jury  ;  namely,  that 
a  chair  very  closely  resembling  that  made  by  the  plaintiff's  patent  had  been 
made  and  sold  before  that  patent  was  taken  out.  The  words  of  the  jury 
were  these:  'We  are  of  opinion  that  Browne'  was  the  inventor  of  the 
machine,  and  found  out  the  principle,  but  not  the  practical  purpose  to  which 
it  is  now  applied.  We  think  that  Minter  (the  plaintiff)  made  that  discov- 
ery.' This  statement  might  not  be  fatal  to  the  plaintiff's  title,  if  his  inven- 
tion were  truly  set  forth  in  the  specification  ;  but  the  material  issue  in  this 
cause  being  simply,  whether  the  plaintiff  did  thereby  particularly  describe 
and  ascertain  the  nature  of  the  said  invention,  we  find  it  needful  to  examine 
the  terms  of  it. 

"  Now,  the  patent  is  taken  out  for  '  An  improvement  in  the  construction, 
making,  or  manufacturing  of  chairs  ;  '  the  method  of  making  the  machine, 
and  the  way  in  which  it  acts,  are  then  fully  described,  without  any  mention 
of  any  of  the  means  employed  in  Browne's  chair.  The  specification  thus 
concludes:  'What  I  claim  as  my  invention,  is  the  application  of  a  self- 
adjusting  leverage  to  the  back  and  seat  of  a  chair,  whereby  the  weight  on 
the  seat  acts  as  a  counterbalance  to  the  pressure  against  the  back  of  such 


•  A  workman,  see  Godson  on  Pat.  p.  27.  Also  Barker  v.  Shaw,  before  Holroyd,  J., 
at  Lancaster,  1823,  in  which  the  plaintiff  was  nonsuited,  because  his  workmao 
invented  the  improvement  in  hats. 


202  LAW    OF    PATENTS. 

chair,  as  above  described.'  Now  it  was  perfectly  clear,  upon  the  evidence, 
that  this  description  applies  to  Browne's  chair,  though  that  was  encumbered 
with  some  additional  machinery.  The  specification,  therefore,  claimed  more 
than  the  plaintiff  had  invented,  and  would  have  actually  precluded  Mr.  Browne 
from  continuing  to  make  the  same  chair  that  he  had  made  before  the 
patentee's  discovery.  We  are  far  from  thinking  that  the  patentee  might  not 
have  established  his  title  by  showing  that  a  part  of  Browne's  chair  could 
have  effected  that  for  which  the  whole  was  designed.  But  his  claim  is  not 
for  an  improvement  upon  Browne's  leverage,  but  for  a  leverage  so  described 
that  the  description  comprehended  Browne's.  We  are,  therefore,  of  opinion, 
that  the  patent  cannot  be  sustained,  and  a  nonsuit  must  be  entered." 

Every  combination  appears,  at  first  sight,  to  be  subject  to  the  same  rules 
for  describing  it,  as  an  improvement  or  addition.  The  same  end,  a  clear  and 
intelligent  description  of  the  manufacture,  without  any  extraneous  matter,  is 
to  be  obtained  ;  but  the  manner  of  attaining  it  is  somewhat  different. 

If  it  is  only  a  combination  of  substances,  materials,  or  parts  of  machines 
in  common  use,  previously  applied  for  the  same  or  different  purposes,  then 
the  specification  will  be  correct  which  sets  out  the  whole  as  the  invention  of 
the  patentee ; '  if  he  clearly  express  that  it  is  in  respect  of  such  new  com- 

>  Boville  V.  Mom-e,  2  Marsh.  211  ;  S.  C.  Dav.  Pat.  Cas.  411. 

A  patent  was  t.ikea  out  by  Mr.  Browne  for  ''a  machine  or  machines,  for  the  manu- 
facture of  bobbin  lace  or  twist  net,  similar  to  and  resembling  the  Buckinghamshire 
lace  net  and  French  lace  net,  as  made  by  the  hand  with  bobbins  or  pillows,"  who 
assigned  it  to  the  plaintiff. 

Gibbs,  C.  J.  Now,  gentlemen,  the  objections  made  to  this  specification  upon  this 
part  of  the  case  are,  that  it  goes  farther  than  it  ought ;  that  it  states  more  to  be  the 
invention  of  Mr.  Browne  than  really  was  so  ;  and  I  think  I  may  state  generally  to  you, 
that  they  say  that  all  thai  precedes  the  crossings  of  the  threads  is  old,  whereas  he  has 
stated  it  as  part  of  his  invention  ;  and  besides  that  they  state,  that  the  forks  and 
dividers,  which  he  has  slated  as  part  of  his  invention,  are  equally  old.  I  think,  with 
respect  to  the  principle,  if  there  existed,  at  the  time  Mr.  Browne  took  out  his 
patent  engines  for  the  making  of  lace,  of  which  his  was  only  an  improvement,  then  his 
patent  ought  to  have  been  only  for  an  improvement ;  and  certainly,  if  he  could  have 
supported  his  patent  for  an  engine,  his  specification  ought  to  have  pointed  out  those 
parts  only  which  were  of  his  invention,  as  those  to  which  his  privilege  applied  ;  and 
if  you  should  be  of  opinion  that  he  has  in  his  specification  stated  more  than  he  is  enti- 
tled to,  as  what  was  his  invention,  then  in  my  opinion  his  specification  is  bad. 

Now,  the  answer  that  the  plainliffshave  endeavored  to  give  to  that  objection  is  this, 
—  they  say  there  is  nothing  in  the  world  that  is  absolutely  new  ;  you  may  refer  it  all 
to  first  principles.  The  wheels  are  well  known  ;  and  yet  you  may  state  them  in  your 
specification  as  one  of  the  means  by  which  you  effect  your  purpose.  Levers  are  well 
known  ;  but  yet  you  may  state  ihem  in  the  same  way;  that  certainly  is  so.  They  go 
on  to  say,  their  invention  consists  not  in  that  or  this  particular  part,  of  which  their 
machine  is  composed,  as  being  new,  but  in  the  conformation  of  all  ihe  parts  of  it ;  the 
novelty  consisting  in  that  conformation  ;  and  if  the  new  conformation  of  all  those 
parts  was  of  the  plaintiff's  invention,  then,  although  every  one  of  the  parts  was  old. 


THE    SPECIFICATION.  203 

bination  or  application,  and  of  that  only,  without  laying  any  claim  to  the 
ntierit  of  original  invention  in  the  use  of  the  materials.  Nothing  more  than 
(he  invention  must  be  claimed.  Every  old  part  which  is  essential  and  mate- 
rial in  producing  the  intended  effect  will  be  considered  as  claimed,  if  it  be 
not  designated  as  old.  If  the  part  in  common  use  be  even  an  elementary 
principle,  or  a  single  combination,  and  effect  a  new  end,  it  becomes  a  part 
of  the  substance  of  the  invention,  and  must  be  protested  against  as  not  being 
claimed. 

If  the  invention  consist  of  a  new  set  of  combinations,  added  to  a  manufac- 
ture composed  of  combinations,  then,  though  the  effect  produced  be  different 
throughout,  the  specification  should  only  describe  the  new  combinations 
which  have  been  invented,  and  how  they  are  to  be  added  to  the  old  ones. 

If  the  combination  consist  of  the  subjects  of  several  patents  which  have 
expired,  or  of  some  nciv  ones  that  have  been  bought,  it  would  appear  from  the 
reasoning  of  EUenborough,  C.  J.,  that  a  description  of  the  method  by  which 
they  were  combined,  with  a  reference  to  the  several  specifications,  would  be 
all  that  is  required  to  sustain  the  patent.' 


(hey  would  be  entitled  to  a  patent  for  a  machine  composed  hy  that  new  conformation 
of  the  whole  ;  but  if  you  find  that  another  person  had  combined  all  those  parts  up  to 
a  given  point,  and  that  Mr.  Browne  took  up  his  combination  at  llial  point,  and  went  on 
comhiiiing  beyond  that,  if  the  subsequent  combinations  alone  were  his  invention  the 
former  combinations  he  will  have  no  right  to.  Those  combinations  could  not  exist 
before,  unless  there  liad  existed  an  engine  in  which  they  were  found,  and  if  there 
existed  liefore  this  time  an  engine  in  which  they  were  found,  it  is  for  you  to 
say,  whether  this  which  Mr.  Browne  has  invented  is  any  more  than  an  improvement  of 
that  engine,  or  whether  it  is  the  invention  of  a  new  engine.  If  Mr.  Browne  has  only 
invented  an  improvement  of  the  old  engine,  be  it  Heathcole's,  or  be  it  any  one  or  two 
engines  which  existed  before,  then  his  specification  by  which  he  claims  the  whole  to 
himself  will  be  bad.  If,  on  the  other  hand,  you  think  that  he  has  invented  an  engine, 
which  consists  of  a  perfectly  new  conformation  of  parts,  although  all  the  parts  were 
used  before,  yet  he  will  be  entitled  to  support  his  patent  for  a  new  machine. 

Now,  1  wish  to  have  what  I  state  upon  this  subject  observed  by  the  counsel  on  both 
sides,  that  they  may  be  aware  how  I  put  it.  If  a  combination  of  those  parts  existed 
before  ;  if  a  combination  of  a  certain  number  of  these  parts  existed  up  to  a  given  point 
before,  and  Mr.  Browne's  invention  sprung  from  that  point,  and  added  other  comliina- 
lions  to  it ;  then  I  think  this  specification,  stating  the  whole  machine  as  his  invention, 
is  bad.  If,  on  the  other  hand,  you  think  he  has  the  merit  of  inventing  the  combination 
of  all  the  parts  from  the  beginning,  then  I  think  the  specification  is  good,  and  that  he 
is  entitled  to  your  verdict.     Verdict  for  the  defendant. 

Gibbs,  C.  J.  Gentlemen,  I  will  just  ask  you  this :  —  Do  you  find  that  the  combination 
of  the  parts  up  to  the  crossing  of  the  ihrea  Is  is  not  new  ? 

Foreman.    Yes,  my  lord. 

Juryman.  The  threads  then  taking  a  new  direction,  and  certainly  the  most  valuable 
part  to  the  plaintifi",  is  a  new  invention  ;  but  we  are  of  opinion  it  is  nothing  more  than 
an  improvement. 

'  Harmarc.  Playne,  H  East,  107  ;  Godson  on  Pat.  159. 


204  LAW     OF     PATENTS. 

Pursuin-T  the  same  order  in  giving  rules  fur  making  specifications  as  was 
followed  in  tiie  former  chapter,  when  the  different  subjects  of  patents  were 
examined,  the  necessary  description  of  the  fifth  kind  of  new  manufactures, 
principles  or  methods  carried  into  practice  by  tangible  means,  must  now  be 
investigated.  It  was  shown,  in  the  last  chapter,  that  a  principle  could  not  be 
the  object  of  a  patent.  The  impossibility  of  giving  a  description  of  it  in 
every  instance  in  which  it  might  be  used,  was  urged  as  a  strong  argument 
against  its  being  allowed  to  be  monopolized. 

Reasons  have  also  been  assigned  why  a  method  merely  as  such,  is  not  a 
proper  subject  for  a  patent.  If  a  method  can  be  the  subject  of  a  patent,  the 
description  of  it  must  indeed  be  very  accurate.  It  must  be  so  clear  and  evi- 
dent that  no  experiments  must  be  necessary  to  learn  it,  and  to  put  it  in  prac- 
tice as  beneficially  as  the  patentee  enjoys  it. 

If  neither  a  principle  nor  a  method  can  be  the  subject  of  a  patent  within 
the  meanin"-  of  the  statute  of  James:  if,  when  a  patent  is  obtained  for  a 
methiid,  it  is  in  fact  granted  for  tangible  means  of  carrying  that  method  into 
practice  ; '  it  is  quite  evident  that  the  specification  of  a  method  is  governed 
by  the  same  rules  as  if  the  description  was  to  be  given  of  some  one  kind  of 
the  above-mentioned  manufactures,  whether  the  real  svbjcct  of  the  patent  be 
a  machine,  improvement,  or  combination,  and  therefore,  that  any  further 
comment  would  be  superfluous. 

When  a  chemical  discovery  is  the  foundation  of  the  invention  for  which 
the  patent  has  been  granted,  inasmuch  as  the  substance  or  thing  produced, 
and  not  the  principle,  process,  or  method,  is  the  legal  subject  of  the  patent, 
it  ought  to  be  described.  The  ingredients,  their  proportions,  the  lime  of 
mixing,  &c.  ought  to  be  fully  stated,  and  then  the  beneficial  use  to  which 
the  substance  can  be  applied.* 

A  manufacture,  when  first  introduced  into  England,  whether  it  be  a  sub- 
stance or  machine,  an  improvement  of  something  already  known  here,  or  a 
combination  of  native  discoveries,  still  it  must  be  fully  and  correctly 
explained.  Its  specification  is  regulated  by  the  same  laws,  and  is  subject  to 
the  same  critical  examination,  as  if  it  were  an  English  invention. 

Thus  it  appears  that  every  part  which  is  new,  however  minute,  must  be 
clearly  described.  In  the  specification  of  a  substance,  the  simplest  elements 
of  which  it  can  be  formed,  and  the  best  modes  of  making  and  using  it,  must 
be  accurately  stated.  In  descriptions  of  machines  there  must  with  scrupu- 
lous fidelity  be  set  forth  the  cheapest  materials,  the  most  exact  proportions 


'  Godson  on  Pat.  73. 

*  Turner  v.  Winter,  1  T.  R.  602.  The  specification  to  this  patent  is  what  a  scien- 
tific man,  unacquainled  with  legal  strictness,  would  naturally  have  made.  It  contains 
almost  every  fault  generally  found  in  the  descriptions  of  this  class  of  manufactures. 
It  is,  therefore,  given  fully  in  the  different  parts  of  the  text. 


THE    SPECIFICATION.  205 

of  the  parts,  the  most  expeditious  and  the  best  mode  of  conducting  them, 
with  the  precise  times  of  putting  on  or  taking  off  any  part  of  the  machine  ; 
and  an  imfrovement  or  new  combination  must  be  kept  distinctly  apart  from 
the  old  manufacture. 

The  public  must  be  put  in  possession  of  the  manufacture  in  a  way  as 
ample  and  beneficial  as  the  patentee  enjoys  it. 

It  has  been  shown  that  it  is  a  technical,  but  unjust  rule  of  law,  that  if  the 
inventor  claims  anything  in  the  title  to  his  patent,  or  in  the  specification, 
which  is  not  new,  or  has  been  before  used,  then  the  whole  patent  becomes 
void.  It  has  also  been  contended,  that  every  part  should  be  useful  as  well 
as  new ;  but  that  was  overruled  by  the  judges,  in  the  case  of  Lewis  v.  Mar- 
ling. ' 

In  the  first  section  of  5  and  6  William  IV.  c.  83,  the  law  has  been  altered 
in  the  following  words  : 

"  Any  person  who,  as  grantee,  assignee,  or  otherwise,  hath  obtained,  or 
who  shall  hereafter  obtain  letters-patent,  for  the  sole  making,  exercising, 
vending,  or  usirjg  of  any  invention,  may,  if  he  think  fit,  enter  with  the  clerk 
of  the  patents  of  England,  Scotland,  or  Ireland,  respectively,  as  the  case  may 
be,  (having  first  obtained  the  leave  of  his  majesty's  attorney-general  or  soli- 
citor-general in  case  of  an  English  patent,  of  the  lord-advocate  or  solicitor- 
general  of  Scotland  in  the  case  of  a  Scotch  patent,  or  of  his  nr;ajesty's  attor- 
ney-general or  solicitor-general  for  Ireland  in  the  case  of  an  Irish  patent, 
certified  by  his  fiat  and  signature.)  9.  disclaimer  of  any  fart  of  either  the  title 
of  the  invention  or  of  the  specification,  staling  the  reason  for  such  disclaimer, 
or  may  with  such  leave  as  aforesaid  enter  a  memorandum  of  any  alteration 
in  the  said  title  or  specification,  not  being  such  disclaimer  or  such  alteration 
as  shall  extend  the  exclusive  right  granted  by  the  said  letteis-patent ;  and  such 
disclaimer  or  memorandum  of  alteration,  being  filed  by  the  said  clerk  of  the 
patents,  and  enrolled  with  the  specification,  shall  be  deemed  and  taken  to  be 
part  of  such  letters-patent  or  such  specification  in  all  courts  whatever  ;  pro- 
vided always,  that  any  person  may  enter  a  caveat  in  Uhe  manner  as  caveats 
are  now  used  to  be  entered,^  against  such  disclaimer  or  alteration ;  which 
caveat  being  so  entered,  shall  give  the  party  entering  the  same  a  right  to 
have  notice  of  the  application  being  heard  by  the  attorney-general  or  solicitor- 
general,  or  lord-advocate,  respectively  ;  provided  also,  that  no  such  dis- 
claimer or  alteration  shall  be  receivable  in  evidence  in  any  action  or  suit 
{save  and  except  in  any  proceeding  by  scire  facias)  pending  at  the  time  whea 
such  disclaimer  or  alteration  was  enrolled,  but  in  every  such  action  or  suit 
the  original  title  and  specification  alone  shall  be  given  in  evidence,  and 
deemed  and  taken  to  be  the  title  and  specification  of  the  invention  for  which 


Mo  B.  &  C.  22. 

*  See  Godson  on  Pat.  chap.  v.  as  to  the  method  of  entering  caveats. 

18 


2Qg  '  LAW     OF     PATENTS. 

the  letters-patent  have  been  or  shall  have  been  granted  :  provided  also,  that 
it  shall  be  lawful  for  the  attorney-general  or  solicitor-general,  or  lord-advo- 
cate, before  granting  such  fiat,  to  require  the  party  applying  for  the  same  to 
advertise  his  disclaimer  or  alteration  in  such  manner  as  to  such  attorney-gen- 
eral or  solicitor-general,  or  lord-advocate,  shall  seem  right,  and  shall,  if  he 
so  require  such  advertisement,  certify  in  his  fiat  that  the  same  has  been  duly 

made. 

The  entry  of  a  disclaimer  of  part  of  a  specification,  under  the  5  and  6 
William  IV.  c.  83,  ^  1,  does  not  give  a  right  of  action  for  infringements, 
committed  previously  to  the  disclaimer.' 


I  Perry  v.  Skinner,  inExch.  E.  T.  1837  ;  Law  Journal,  p.  127. 


I 


I 


CHAPTER   II, 

PROCEKDINGS    AT    THE    PATENT    OFFICE. 

I.  Caveat  for  incomplete  invention. 
II.  The  Petition,  Oath,  Payment  of  fees. 

III.  Signatures  of  the  Secretary  of  State  and  Commissioner. 

IV.  Interferincr  applications. 

V.  Renewal  and  Amendment  of  Pateuts. 

Caveat  for  Incomplete  Invention. 
^170.  The  twelfth  section  of  the  Act  of  July  4,  1836, 
provides  that  any  citizen  of  the  United  States,  or  alien  who 
shall  have  been  resident  in  the  United  States  one  year  next  pre- 
ceding, and  who  shall  have  made  oath  of  his  intention  to 
become  a  citizen  thereof,  who  shall  have  invented  any  new  art, 
machine,  or  improvement  thereof,  and  shall  desire  further  time 
to  mature  the  same,  may,  on  payment  of  the  sum  of  twenty 
dollars,  file  in  the  patent  office  a  caveat,  setting  forth  the  design 
and  purpose  thereof,  and  its  principal  and  distinguishing  char- 
acteristics, and  praying  protection  of  his  right,  till  he  shall  have 
matured  his  invention  ;  which  sum  of  twenty  dollars,  in  case 
the  person  filing  such  caveat  shall  afterwards  take  out  a  patent 
for  the  invention  therein  mentioned  shall  be  considered  a  part 
of  the  sum  required  for  the  same.  And  such  caveat  shall  be 
filed  in  the  confidential  archives  of  the  office,  and  preserved  in 
secrecy.  And  if  application  shall  be  made  by  any  other  per- 
son within  one  year  from  the  time  of  filing  such  a  caveat,  for  a 
patent  of  any  invention  with  which  it  may  in  any  respect  inter- 
fere, it  shall  be  the  duty  of  the  commissioner  to  deposit  the 
description,  specifications,  drawings,  and  model,  in  the  confiden- 
tial archives  of  the  office,  and  to  give  notice,  by  mail,  to  the 


208  LAW    OF     PATENTS. 

person  filing  the  caveat,  of  such  application,  who  shall,  within 
three  months  after  receiving  the  notice,  if  he  would  avail  him- 
self of  the  benefit  of  his  caveat,  file  his  description,  specifica- 
tions, drawings,  and  model ;  and  if,  in  the  opinion  of  the  com- 
missioner, the  specifications  of  claim  interfere  with  each  other, 
like  proceedings  may  be  had  in  all  respects  as  are  provided  in 
the  case  of  interfering  applications. 

The  Petition,  Oath,  Payment  of  Fees,  etc. 
■§>  17 1 .  The  Act  of  1836,  '§>  6,  requires  an  inventor  who  desires 
to  obtain  a  patent  to  "  make  application  in  writing  to  the  Com- 
missioner of  Patents,"  &c.  This  application  in  writing  has,  from 
the  origin  of  the  government,  been  by  way  of  petition,  generally 
with  the  specification  annexed  and  referred  to,  or  accompanied  by 
the  specification,  filed  at  the  same  time.  The  form  of  the  petition 
is  not  material,  provided  it  set  forth  the  facts  to  which  the  appli- 
cant is  required  to  make  oath.  When  filed,  it  is  to  be  pre- 
sumed to  adopt  the  specification,  or  schedule,  filed  at  the  same 
time,  and  to  ask  for  a  patent  for  the  invention  therein  de- 
scribed.^ 

<§>  17!2.  The  applicant  is  also  required  to  make  oath  or  affirm- 
ation that  he  does  verily  believe  that  he  is  "  the  original  and  first 
inventor,"  &c.,  "  and  that  he  does  not  know  or  believe  that  the 
same  was  ever  before  known  or  used,"  and  also  of  what  coun- 
try he  is  a  citizen  ;  which  oath  or  affirmation  may  be  made  be- 
fore any  person  authorized  by  law  to  administer  oaths.^ 

"^  173.  The  applicant  is  required  to  make  oath  or  affirma- 


'  Hogg  V.  Emerson,  6  Howard,  437,  480.  The  rules  of  the  Patent  Office 
give  a  form  of  petition  which  it  is  advisable  to  adopt,  in  all  cases.  See 
Appendix. 

*  Act  of  July  4,  1836,  §6.  The  oath  extends  to  all  described  in  the 
schedule  filed  with  the  petition,  as  well  as  to  the  title  or  description  of  the 
invention  contained  in  the  petition  itself.  Hogg  v.  Emerson,  6  Howard, 
437,  482. 


THE    PETITION,    OATH,    PAYMENT,    ETC.  209 

tion,  not  that  he  is  the  original  and  first  inventor  or  discoverer, 
but  that  he  beheves  himself  to  be  so.  He  cannot  know  abso- 
lutely whether  he  first  invented  or  discovered  the  thing  for 
which  he  claims  a  patent,  but  he  may  believe  that  he  did  ;  and 
it  is  only  when  he  is  willing  to  make  oath  that  he  so  believes, 
that  the  law  grants  him  the  patent.  A  subsequent  section  of 
the  same  statute  provides  for  one  case,  in  which  a  pa;tent  shall 
still  be  valid,  if  issued  to  an  applicant  who  believed  himself  to 
be  the  first  Inventor  or  discoverer,  although  he  was  not  so,  in 
point  of  fact.  This  case  is  where  the  invention  or  discovery 
had  been  previously  known  or  used  in  a  foreign  country,  but 
had  not  been  patented  or  described  in  any  public  work,  and  the 
patentee  was  ignorant  of  that  fact.  If  the  patentee,  before 
making  hi*  application,  had  learned  that  the  thing  had  been 
known  or  used  in  a  foreign  country,  although  not  patented  or 
described  in  any  foreign  work,  he  cannot  have  believed  himself 
to  be  the  first  inventor  or  discoverer.  But  if  he  learn  the  fact 
after  he  has  taken  the  oath,  it  will  not  invalidate  his  patent.^ 

«§v  174.  An  irregularity  in  the  form  of  the  oath  will  be  cured 
by  the  issuing  of  the  patent,  and  it  seems  that  a  patent  would 
be  valid,  when  issued,  although  the  oath  might  not  have  been 
taken  at  all.  It  has  been  held  that  the  taking  of  the  oath  is 
only  a  prerequisite  to  the  granting  of  the  patent,  and  in  no  de- 
gree essential  to  its  validity  ;  so  that  if  the  proper  authorities 
from  inadvertence  or  any  other  cause,  should  grant  a  patent, 
where  the  applicant  had  not  made  oath  according  to  the  requi- 
sitions of  the  statute,  the  patent  would  still  be  valid.  But 
where  the  oath  has  been  taken  and  is  recited  in  the  patent,  it  is 
the  foundation  of  the  onus  probandi  thrown  on  the  party  who 
alleges  that  the  patentee  Vv'as  not  the  original  and  first  inventor.^ 

<^  175.  The  ninth  section  of  the  statute  provides  that  before 


•  Act  4th  July,  1836,  §  15. 

2  Alden  v.  Dewey,  1  Story's  R.  336,  341. 

18* 


210  LAW     OF     PATENTS. 

any  application  for  a  patent  shall  be  considered  by  the  commis- 
sioner, the  applicant  shall  pay  into  the  treasury  of  the  United 
States,  or  into  any  of  the  deposit  banks  to  the  credit  of  the 
Treasury,  if  he  be  a  citizen  of  the  United  States,  or  an  alien 
and  shall  have  been  resident  in  the  United  States  for  one 
year  next  preceding,  and  shall  have  made  oath  of  his  intention 
to  become  a  citizen  thereof,  the  sum  of  thirty  dollars  ;  if  a 
subject  of  the  King  of  Great  Britain,  the  sum  of  five  hundred 
dollars.^ 

Signatures  of  the  Secretary  of  State  and  of  the 
Commissioner  of  Patents. 
<^  176.  The  Act  of  July  4,  1836,  c.  357,  »§.  5,  provides  that 
patents  shall  be  issued  from  the  patent  office  "  in  the  name  of 
the  United  States,  and  under  the  seal  of  said  office,  and  be 
signed  by  the  secretary  of  state,  and  countersigned  by  the  com- 
missioner of  said  office." 

«^  177.  It  has  been  held  that  the  sanction  of  the  secretary  of 
state  to  a  correction  of  a  clerical  mistake  in  letters-patent,  may 
be  given  in  writing  afterwards  ;  and  that  he  need  not  resign 
the  letters  themselves.    But  the  commissioner,  if  he  be  the  same 
officer  who  countersigned  the  letters  originally,  may  make  the 
correction,    without   re-signing   or  re-sealing.     If  the  mistake 
occurs  in  the  copy  of  the  patent,  and   not  in  the  record   or 
enrolment,  it  may  be  corrected  by  the  commissioner  and  made 
to  conform  to  the  original.     If  the  mistake  in  the  enrolled  pa- 
tent be  a  material  one,  the  letters   cannot  operate  except  on 
cases  arising  after  the  correction  is  made  ;  but  if  the  correction 
be  of  a  clerical  mistake  only,  it  operates  back  to  the  original 
date  of  the  letters,  unless,  perhaps,  as  to  third  persons,   who 
have  acquired  intervening  rights  to  be  affected  by  the  alteration.^ 


'  Act  4th  July,  1836,  ^9. 

«  Woodvvorlh  v.  Hall,  1  Woodb.  &  M.  248;  S.  C.  Ibid.  389. 


RENEWAL    OR     AMENDMENT    OF    A    PATENT.  211 

<§.  178.  It  has  also  been  held,  that  a  signature  to  the  patent, 
and  a  certificate  of  copies  by  a  person  calling  himself  "  acting 
commissioner,"  is  sufficient  on  its  face  in  controversies  between 
the  patentee  and  third  persons,  as  the  law  recognizes  an  acting 
commissioner  to  be  lawful.^ 

Renewal  or  Amendment  of  a  Patent. 

§,  179.  The  Act  of  July  4,  1836,  ^  13,  makes  the  following 
provision  in  case  of  a  defective  or  insufficient  specification,  or 
of  the  subsequent  invention  of  something  which  the  patentee 
wishes  to  add  to  his  specification. 

<§.  180.  "  And  be  it  further  enacted  :  That  whenever  any  pa- 
tent which  has  heretofore  been  granted,  or  which  shall  hereafter 
be  granted,  shall  be  inoperative  or  invalid,  by  reason  of  a  de- 
fective or  insufficient  description  or  specification,  or  by  reason 
of  the  patentee  claiming  in  his  specification  as  his  own  inven- 
tion, more  than  he  had  or  shall  have  a  right  to  claim  as  new  ;  if 
the  error  has  or  shall  have  arisen  by  inadvertency,  accident, 
or  mistake,  and  without  any  fraudulent  or  deceptive  intention, 
it  shall  be  lawful  for  the  commissioner,  upon  the  surrender  to 
him  of  such  patent,  and  the  payment  of  the  further  duty  of 
fifteen  dollars,  to  cause  a  new  patent  to  be  issued  to  the  said 
inventor,  for  the  same  invention,  for  the  residue  of  the  period 
then  unexpired  for  which  the  original  patent  was  granted,  in 
accordance  with  the  patentee's  corrected  description  and  speci- 
fication. And  in  case  of  his  death,  or  any  assignment  by  him 
made  of  the  original  patent,  a  similar  right  shall  vest  fn  his 
executors,  administrators,  or  assignees.  And  the  patent  so 
re-issued,  together  with  the  corrected  description  and  specifica- 
tion, shall  have  the  same  effect  and  operation   in  law,  on  the 

'  Woodworth  v.  Hall,  1  Woodb.  &  M.  248.  "Where  evidence  is  offered  to 
prove  that  the  "  acting  commissioner  "  who  signs  a  paient  was  not  appointed 
by  the  President,  it  is  doubtful  whether  it  is  coinpetent  in  controversies 
where  he  is  not  a  party.     S.  C.  1  Woodb.  &  BL-  389. 


212  I^AW    OF      PATENTS. 

trial  of  all  actions,  hereafter  commenced  for  causes  subsequently 
accruing,  as  though  the  same  had  been  originally  filed  in  such 
corrected  form,  before  the  issuing  out  of  the  original  patent. 
And  wlienever  the  original  patentee  shall  be  desirous  of  adding 
the  description  and  specification  of  any  new  improvement  of 
the  original  invention  or  discovery  which  shall  have  been 
invented  or  discovered  by  him  subsequent  to  the  date  of  his 
patent,  he  may,  like  proceedings  being  had  in  all  respects  as  in 
the  case  of  original  applications,  and  on  the  payment  of  fifteen 
dollars,  as  herein  before  provided,  have  the  same  annexed 
to  the  original  description  and  specification ;  and  the  commis- 
sioner shall  certify,  on  the  margin  of  such  annexed  description 
and  specification,  the  time  of  its  being  annexed  and  recorded  ; 
and  the  same  shall  thereafter  have  the  same  effect  in  law,  to 
all  intents  and  purposes,  as  though  it  had  been  embraced  in 
the  original  description  and  specification."  ^ 

181.  It  has  been  held  by  Mr.  Justice  Story  that  the  decision 
of  the  Commissioner  in  respect  to  the  surrendering  of  an  old 
patent,  and  granting  a  new  one,  is  not  reexaminable  elsewhere, 
unless  it  appear  on  the  face  of  the  patent  that  he  had  exceeded 
his  authority,  and  there  is  a  clear  repugnancy  between  the  old 
and  the  new  patent,  or  the  new  one  has  been  obtained  by  col- 

'  The  Act  of  March  3,  1837,  ^8,  makes  a  further  provision  on  this 
subject : 

"  And  be  it  further  enacted,  That,  whenever  application  shall  be  made 
to  the  commissioner  for  any  addition  of  a  newly-discovered  improvement  to  be 
made' to  an  existing  patent,  or  whenever  a  patent  shall  be  returned  for  cor- 
rection and  re-issue,  the  specification  of  claim  annexed  to  every  such  patent 
shall  be  subject  to  revision  and  restriction,  in  the  same  manner  as  are  original 
applications  for  patents  ;  the  commissioner  shall  not  add  any  such  improve- 
ment to  the  patent  in  the  one  case,  nor  grant  the  re-issue  in  the  other  case, 
until  the  applicant  shall  have  entered  a  disclaimer,  or  altered  his  specification 
of  claim  in  accordance  with  the  decision  of  the  commissioner ;  and  in  all 
such  cases,  the  applicant,  if  dissatisfied  with  such  decision,  shall  have  the 
same  remedy  and  be  entitled  to  the  benefit  of  the  same  privileges  and  pro- 
ceedings as  are  provided  by  law  in  the  case  of  original  applications  for 
patents." 


RENEWAL    OR    AMENDMENT    OF    A    PATENT.  213 

lusion  between  the  Commissioner  and  the  patentee.  If  neither 
of  these  things  appears,  then  the  presumption  tiiat  the  renewed 
patent  is  for  the  same  invention  as  the  old  patent,  is  conclusive.^ 

'  Woodworth  v.  Stone,  3  Story's  R.  749,  753.  In  this  case,  which  was 
in  equity,  the  learned  judge  said,  "  But  the  most  material  objection  taken  is, 
that  the  new  patent  is  not  for  the  same  invention  as  that  which  has  been 
surrendered.  And  certainly,  if  this  be  correct,  there  is  a  fatal  objection  to 
the  prolongation  of  the  injunction.  But  is  the  objection  well  founded  in 
point  of  fact  ?  It  is  said,  that  the  present  patent  is  for  a  combination  only, 
and  that  the  old  patent  was  for  a  combination  and  something  more,  or  dif- 
ferent But  I  apprehend  that,  upon  the  face  of  the  present  patent,  the  ques- 
tion is  scarcely  open  for  the  consideration  of  the  court;  and,  at  all  events, 
certainly  not  open  in  this  stage  of  the  cause.  I  have  already,  in  another 
cause,  had  occasion  to  decide  that  where  the  commissioner  of  patents  accepts 
a  surrender  of  an  old  patent  and  grants  a  new  one,  under  the  Act  of  1836, 
ch.  357,  his  decision,  being  an  act  expressly  confided  to  him  by  law,  and 
dependent  upon  his  judgment,  is  not  reexaminable  elsewhere  ;  and  that  the 
court  must  take  it  to  be  a  lawful  exercise  of  his  authority,  unless  it  is  appa- 
rent upon  the  very  face  of  the  patent,  that  he  has  exceeded  his  authority, 
and  there  is  a  clear  repugnancy  between  the  old  and  the  new  patent,  or  the 
new  one  has  been  obtained  by  collusion  between  the  commissioner  and  the 
patentee.  Now,  upon  the  face  of  it,  the  new  patent,  in  the  present  case, 
purports  to  be  for  the  same  invention  and  none  other,  that  is  contained  in 
the  old  patent.  The  avowed  difference  between  the  new  and  the  old,  is, 
that  the  specification  in  the  old  is  defective,  and  that  the  defect  is  intended 
to  be  remedied  in  the  new  patent.  It  is  upon  this  very  ground,  that  the 
old  patent  was  surrendered  and  the  new  patent  was  granted.  The  claim  in 
the  new  patent  is  not  of  any  new  invention,  but  of  the  old  invention  more 
perfectly  described  and  ascertained.  It  is  manifest  that  in  the  first  instance, 
the  commissioner  was  the  proper  judge  whether  the  invention  was  the  same 
or  not,  and  whether  there  was  any  deficit  in  the  specification  or  not,  by  inad- 
vertence, accident,  or  mistake  ;  and  consequently,  he  must  have  decided 
that  the  combination  of  machinery  claimed  in  the  old  patent  was,  in  sub- 
stance, the  same  combination  and  invention  claimed  and  described  in  the 
new.  My  impression  is,  that  at  the  former  tiial  of  the  old  patent  before 
me,  I  held  the  claim  substantially  (although  obscurely  worded)  to  be  a  claim 
for  the  invention  of  a  particular  combination  of  machinery,  for  planing, 
tongueing,  and  grooving,  and  dressing  boards,  &c.  ;  or,  in  other  words,  that 
it  was  the  claim  of  an  invention  of  a  planing  machine  or  planing  apparatus 
such  as  he  had  described  in  his  specification. 

It  appears  to  me,  therefore,  thsit  prima  facie,  an<i  at  all  events,  in  this 


^214  ^^^    ^^    PATENTS. 

^  18-2.  The  same  learned  judge  has  also  held,  that  the  stat- 
utes which  authorize  the   reissue  of  a  patent,  because  of  a  de- 


slage  of  the  cause  it  must  be  taken  to  be  true,  that  the  new  patent  is  for  the 
same  invention  as  the  old  patent  ;  and  that  the  only  difference  is,  not  in  the 
invention  itself,  but  in  the  specification  of  it.  In  the  old,  it  was  defectively 
described  and  claimed.  In  the  new,  the  defects  are  intended  to  be  reme- 
died. Whether  they  are  effectually  remedied  is  a  point  not  now  properly 
before  the  court.  But  as  the  commissioner  of  patents  has  granted  the  new 
patent  as  for  the  same  invention  as  the  old,  it  does  not  appear  to  me,  that 
this  court  is  now  at  liberty  to  reverse  his  judgment,  or  to  say  that  he  has 
been  guilty  of  an  excess  of  authority,  at  least  (as  has  been  already  sug- 
gested) not  in  this  stage  of  the  cause  ;  for  that  would  be  for  the  court  of 
itself  to  assume  to  decide  many  matters  of  fact,  as  to  the  specification,  and 
the  combination  of  machinery  in  both  patents,  without  any  adequate  means 
of  knowledge  or  of  guarding  itself  from  gross  error.  For  the  purpose  of 
the  injunction,  if  for  nothing  else,  I  must  take  the  invention  to  be  the  same 
in  both  patents,  after  the  commissioner  of  Patents  has  so  decided,  by  grant- 
ing the  new  patent." 

In  Allen  v.  Blunt,  3  Story's  R.  742,  743,  which  was  an  action  at  law,  he 
observed,  "  The  13lh  section  of  the  Patent  Act,  of  1836,  ch.  357,  enacts, 
that  whenever  any  patent  shall  be  inoperative  or  invalid,  by  reason  of  a  de- 
fective or  insufficient  description  or  specification,  or  by  reason  of  the  patentee 
claiming  in  his  specification,  as  his  own  invention,  more  than  he  had,  or  shall 
have  a  right  to  claim  as  new,  if  the  error  has  or  shall  have  arisen  by  inad- 
vertency, accident,  or  mistake,  and  without  any  fraudulent  or  deceptive  in- 
tention, it  shall  be  lawful  for  the  commissioner,  upon  the  surrender  to  him 
of  such  patent,  and  the  payment  of  the  further  duty  of  fifteen  dollars,  to 
cause  a  new  patent  to  be  issued  for  the  same  invention  for  the  residue  of  the 
term  then  unexpired,  for  which  the  original  patent  was  granted,  in  accord- 
ance with  the  patentee's  corrected  description  and  specification.  Now,  the 
specification  may  be  defective  or  insufficient,  either  by  a  mistake  of  law,  as 
to  what  is  required  to  be  stated  therein  in  respect  to  the  claim  of  the  inventor, 
or  by  a  mistake  of  fact,  in  omitting  things  which  are  indispensable  to  the 
completeness  and  exactness  of  the  description  of  the  invention,  or  of  the 
mode  of  constructing,  or  making,  or  using  the  same.  Whether  the  invention 
claimed  in  the  original  patent,  and  that  claimed  in  the  new  amended  patent, 
is  substantially  the  same,  is  and  must  be  in  many  cases  a  matter  of  great 
nicety  and  difficulty  to  decide.  It  may  involve  consideration  of  fact  as  well 
as  of  law.  Who  is  to  decide  the  question  1  The  true  answer  is,  the  Com- 
missioner of  Patents  ;  for  the  law  entrusts  him  with  the  authority,  not  only 
to  accept  the  surrender,  but  to  grant  the  new  amended  patent.     He  is  bound 


RENEWAL    OR    AMENDMENT    OF    A    PATENT.  215 

fective  or  redundant  specification  or  description,  without  fraud, 
or  for  the  purpose  of  adding  thereto  an  improvement,  do  not 
require  the  patentee  to  claim,  in  his  renewed  patent,  all  things, 


therefore  by  the  very  nature  of  his  duties,  to  inquire  into  and  ascertain, 
whether  the  specification  is  sufficient  or  insufficient,  in  point  of  law  or  fact, 
and  whether  the  inventor  has  claimed  more  than  he  has  invented,  and  in 
such  case,  whether  the  error  has  arisen  from  inadvertency,  accident,  or 
mistake,  or  with  a  fraudulent  or  deceptive  intention.  No  one  can  well 
doubt,  that  in  the  first  instance,  therefore,  he  is  bound  to  decide  the  whole 
law  and  facts  arising  under  the  application  for  the  new  patent.  Prima  facie 
therefore,  it  must  be  presumed  that  the  new  amended  patent  has  been  pro- 
perly and  rightfully  granted  by  him.  I  very  much  doubt  whether  his  deci- 
sion is  or  can  be  reexaminable  in  any  other  place,  or  in  any  other  tribunal, 
at  least,  unless  his  decision  is  impeached  on  account  of  gross  fraud  or  con- 
nivance between  him  and  the  patentee  ;  or  unless  his  excess  of  authority  is 
manifest  upon  the  very  face  of  the  papers  ;  as,  for  example,  if  the  original 
patent  were  for  a  chemical  combination,  and  the  new  amended  patent  were 
for  a  machine.  In  other  cases,  it  seems  to  me,  that  the  law,  having 
entrusted  him  with  authority  to  ascertain  the  facts,  and  to  grant  the  patent, 
his  decision,  bona  fide  made,  is  conclusive.  It  is  like  many  other  cases, 
where  the  law  has  referred  the  decision  of  a  matter  to  the  sound  discretion 
of  a  public  officer,  whose  adjudication  becomes  conclusive.  Suppose  the 
Secretary  of  the  Treasury  should  remit  a  penalty  or  forfeiture  incurred  by 
a  breach  of  the  laws  of  the  United  Slates,  would  his  decision  be  reexamina- 
ble in  any  court  of  law  upon  a  suit  for  the  penalty  or  forfeiture?  The 
President  of  the  United  Slates  is,  by  law,  invested  with  authority  to  call 
forth  the  militia  to  suppress  insurrections,  to  repel  invasions,  and  to  execute 
the  laws  of  the  Union  ;  and  it  has  been  held  by  the  supreme  court  of  the 
United  States,  that  his  decision  as  to  the  occurrence  of  the  exigency,  is 
conclusive.  (Martin  v.  Mott,  12  Wheat.  R.  19.)  In  short  it  may  be  laid 
down  as  a  general  rule,  that,  where  a  particular  authority  is  confided  to  a 
public  officer  to  be  exercised  by  him  in  his  discretion  upon  the  examination 
of  facts,  of  which  he  is  made  the  appropriate  judge,  his  decision  upon  these 
facts  is,  in  the  abs-^nce  of  any  controlling  provisions,  absolutely  conclusive 
as  to  the  existence  of  those  facts.  My  opinion,  therefore,  is,  that  the  grant 
of  the  present  amended  patent  by  the  Commissioner  of  Patents  is  conclusive 
as  to  the  existence  of  all  the  facts,  which  were  by  law  necessary  to  entitle 
him  to  issue  it ;  at  least,  unless  it  was  apparent  on  the  very  face  of  the 
patent  itself,  without  any  auxiliary  evidence,  that  he  was  guilty  of  a  clear 
excess  of  authority,  or  that  the  patent  was  procured  by  a  fraud  between  him 
and  the  patentee,  which  is  not  pretended  in  the  present  case." 


216  LAW     OF     PATENTS.     , 

which  were  claimed  in  his  original  patent,  but  they  give  him  the 
privilege  of  retaining  whatever  he  deems  proper.^ 


'  Carver  v.  The  Braintree  Manuf.  Co.  2  Story's  R.  432,  438.  In  this  case, 
the  learned  judcre  said  :  "  The  next  objection  is,  that  the  patentee  has 
omitted  some  things  in  his  renewed  patent,  which  he  claimed  in  his  original 
patent  as  a  part  of  his  invention,  viz.,  the  knob,  the  ridge,  and  the  flaring  of 
the  lateral  surface  of  the  rib  above  the  saw,  and  that  he  claims  in  his  renewed 
patent  the  combination  of  the  thickness  and  the  slope  of  the  front  and  back 
.surfaces  of  the  rib.  Now,  by  the  thirteenth  section  of  the  Patent  Act  of 
1836,  ch.  357,  it  is  provided,  that  whenever  any  patent,  which  is  granted, 
"  shall  be  inoperative  or  invalid  by  reason  of  a  defective  or  insufficient  de- 
scription or  specification,  or  by  reason  of  the  patentee  claiming  in  his  speci- 
fication, as  his  own  invention,  more  than  he  had  or  shall  have  a  right  to 
claim  as  new,  if  the  error  has  or  shall  have  arisen  by  inadvertency,  mistake 
or  accident,  and  without  any  fraudulent  or  deceptive  intention,  it  shall  be 
lawful  for  the  commissioner,  upon  the  surrender  to  him  of  such  patent,  and 
the  payment  of  the  further  sum  of  fifteen  dollars,  to  cause  a  new  patent  to 
be  issued  to  the  inventor  fur  the  same  invention,  for  the  residue  of  the  period 
then  unexpired  for  which  the  original  patent  was  granted,  in  accordance  with 
the  patentee's  corrected  description  and  specification."  And  it  is  afterwards 
added,  that,  "  whenever  the  original  patentee  shall  be  desirous  of  adding  the 
description  of  any  new  improvement  of  the  original  invention  or  discovery, 
which  shall  have  been  invented  or  discovered  by  him  subsequent  to  the  date 
of  his  patent,  he  may,  like  proceedings  being  had  in  all  respects  as  in  the 
case  of  original  applications,  and  on  the  payment  of  fifteen  didlars,  as  here- 
inbefore provided,  have  the  same  annexed  to  the  original  description  and 
specification.  The  act  of  1837,  ch.  45,  ^  8,  further  provides,  "that  when- 
ever any  application  shall  be  made  to  the  commissioner  for  any  addition,  or 
a  newly  discovered  improvement,  to  be  made  to  an  existing  patent,  or  when- 
ever a  patent  shall  be  returned  for  correction  and  reissue,  the  specification 
annexed  to  every  such  patent  shall  be  subject  to  revision  and  restriction,  in 
the  same  manner  as  original  applications  for  patents  ;  the  commissioner  shall 
not  add  any  such  improvements  to  the  patent  in  the  one  case,  nor  grant  the 
reissue  in  the  other  case,  until  the  applicant  shall  have  entered  a  disclaimer, 
or  altered  his  specification  of  claim,  in  accordance  with  the  decision  of  the 
commissioner."     (Act  of  1836,  ch.  357,  ^  15.) 

ISow  I  see  nothing  in  these  provisions  which,  upon  a  reissue  of  a  patent, 
requires  the  patentee  to  claim  all  things  in  the  renewed  patent,  which  were 
claimed  as  his  original  invention,  or  part  of  his  invention  in  his  original  pa- 
tent. On  the  contrary,  if  his  original  patent  claimed  too  much,  or  if  the 
commissioner  deemed  it  right  to  restrict  the  specification,  and  the  patentee 


RENEWAL    OR    AMENDMENT    OF    A    PATENT.  217 

*§>  183.  When  a  patent  is  thus  renewed,  it  is  granted  for  the 
unexpired  term,  commencing  from  the  date  of  the  original  pa- 
tent which  is  surrendered.  Consequently  it  operates  from  the 
commencement  of  the  original,  and  will  enure  to  the  benefit  of 
assignees,  who  became  such  before  the  renewal,  although  no 
assignment  is  made  to  them  after  the  renewal.^ 


acquiesced  therein,  it  seems  to  me,  that,  in  each  case,  the  renewed  patent,  if 
it  claimed  less  than  the  original,  would  be  equally  valid.  A  specification 
may  be  defective  and  unmaintainable  under  the  patent  act,  as  well  by  an  ex- 
cess of  claim,  as  by  a  defect  in  the  mode  of  stating  it.  How  can  the  court 
in  this  case  judicially  know,  whether  the  patentee  left  out  the  knob  and 
ridge,  and  flaring  of  the  lateral  surface  of  the  lib,  in  the  renewed  patent, 
because  he  thought,  that  they  might  have  a  tendency  to  mislead  the  public 
by  introducing  what,  upon  further  reflection,  he  deemed  immaterial  or  unes- 
sential, and  that  the  patent  would  thus  contain  more  than  was  necessary  to 
produce  the  described  effect,  and  be  open  to  an  objection,  which  might  be 
fatal  to  his  right,  if  ii  was  done  to  deceive  the  publici  (Act  of  1836,  ch. 
357,  ^  15.)  Or,  how  can  the  court  judicially  know,  that  the  commissioner 
did  not  positively  require  this  very  omission?  It  is  certain,  that  he  might 
have  given  it  his  sanction.  But  I  incline  very  strongly  to  hold  a  much 
broader  opinion  ;  and  that  is,  that  an  inventor  is  always  at  liberty  in  a  re- 
newed patent  to  omit  a  part  of  his  original  invention,  if  he  deems  it  expedi- 
ent, and  to  retain  that  part  only  of  his  original  invention,  which  he  deems 
it  fit  to  retain.  No  harm  is  done  to  the  public  by  giving  up  a  part  of  what 
he  has  actually  invented  ;  for  the  public  may  then  use  it ;  and  there  is  no- 
thing in  the  policy  or  terms  of  the  patent  act,  which  prohibits  such  a  re- 
striction. 

The  other  part  of  the  objection  seems  to  me  equally  untenable.  If  the 
description  of  the  combination  of  the  thickness,  and  the  slope  of  the  front 
and  back  surfaces  of  the  rib,  were  a  part  of  the  plaintiff's  original  invention, 
(as  the  objection  itself  supposes,)  and  were  not  fully  stated  in  the  original 
specification,  that  is  exactly  such  a  defect,  as  the  patent  acts  allow  to  be 
remedied.  A  specification  may  be  defective,  not  only  in  omitting  to  give  a 
full  description  of  the  mode  of  constructing  a  machine,  but  also  in  omitting 
to  describe  fully  in  the  claim,  the  nature  and  extent,  and  chaiacter  of  the 
invention  itself.  Indeed  this  latter  is  the  common  defect,  Ibr  which  most 
renewed  patents  are  granted." 

'  Woodworth  v.  Stone,  3  Story's  R.  749.  Woodwoith  v.  Hall,  1  Wood- 
bury &  Minot,  248.  Both  of  these  cases  related  to  the  same  patent.  In 
the  first,  Mr.  Justice  Story  said,   "  If  the  present  case  had  stood  m«rely 

19 


Olg  LAW    OF    PATENTS. 

»$  184.     The  Supreme  Court  of  the  United  States  have  xie- 
cided,    upon  great    consideration,    that   the    Commissioner   of 


upon  the  original  bill,  it  appears  to  me  clear,  that  the  motion  to  dissolve  the 
injunction  granted  upon  that  bill,  ought  to  prevail,  because,  by  the  surren- 
der of  the  patent,  upon  which  that  bill  is  founded,  the  right  to  maintain  the 
same  would  be  entirely  gone.  I  agree  that  it  is  not  in  the  po\^er  of  the  p:.- 
tentee,  by  a  surrender  of  his  patent,  to  affect  the  rights  of  third  persons,  to 
whom  he  has  previously,  by  assignment,  passed  his  interest  in  the  whole  or 
a  part  of  the  patent,  without  the  consent  of  such  assignees.  But,  here,  the 
supplemental  bill  admits,  that  the  assignees,  who  are  parties  to  the  original 
and  supplemental  bill,  have  consented  to  such  a  surrender.  They  have, 
therefore,  adopted  it ;  and  it  became  theirs  in  the  same  manner  as  if  it  had 
been  their  personal  act,  and  done  by  their  authority. 

The  question,  then,  is  precisely  the  same,  as  if  the  suit  were  now  solely 
in  behalf  of  the  patentee.     In  order  to  understand  with  clearness  and  accu- 
racy, some  of  the  objections  to  the  continuance  of  the  injunction,  it  may  be 
necessary  to  state,  that  the  original  patent  to  William  Woodworth,  (the  in- 
ventor,) who  is  since  deceased,  was  granted  on  the  27th  of  December,  182S. 
Subsequently,  under  the  18th  section  of  the  act  of  1836,  ch.  357,  the  com- 
missioner of  Patents,  on  the  16th  of  November,  1842,  recorded  the  patent  in 
favor  of  William  W.  Woodworth,  the  administrator  of  William  Woodworth, 
(the  inventor,)  for  seven  years,  from  the  27th  of  December,  1842.     Con- 
gress, by  an  act  passed  at  the  last  session,  (Act  of  26th  of  February,  ch. 
27,)  extended  the  time  of  the  patent  for  seven  years,  from  and  after  the  27th 
of  December,  1849,  (to  which  time  the  renewed  patent  extended)  ;  and  the 
Commissioner  of  Patents  was  directed  to  make  a  certificate  of  such  exten- 
sion in  the  name  of  the  administrator  of  William  Woodworth,  (the  inventor,) 
and  to  append  an  authenticated  copy  thereof  to  the  original  letters-patent, 
whenever  the  same  shall  be  requested  by  the  said  administrator  or  his  as- 
signs.    The  Commissioner  of  Patents,  accordingly,  on  the  3d  of  March, 
1845,  at  the  request  of  the  administrator,  made  such  certificate  on  the  orig- 
inal patent.     On  the  8th   day  of  July,  1815,  the  administrator  surrendered 
the  renewed  patent  granted  to  him,  "  on  account  of  a  defect  in  the  specifica- 
tion."    The  surrender  was  accepted,  and  a  new  patent  was  granted  on  the 
same  day  to  the  administrator,  reciting  the  preceding  facts,  and  that  the  sur- 
render was  "  on  account  of  a  defective  specification,"  and  declaring  that  the 
new  patent  was  extended  for  fourteen  years,  from  the  27th  December,  1828, 
'•  in  trust  for  the  heirs  at  law,  of  the  said  W.  Woodworth,  (the  inventor,) 
their  heirs,  administrators  or  assigns." 

Now,  one  of  the  objections  taken  to  the  new  patent  is,  that  it  is  for  the 
term  of  fourteen  years,  and  not  for  the  term  of  seven  years,  or  for  two  sue- 


RENEWAL  OR  AMENUMENT  OF  A  PATENT.         219 

Patents  can  lawfully  receive  a  surrender  of  letters-patent  for  a 
defective  specification,  and   issue  new  letters  patent   upon  an 


cessive  terms  of  seven  j'ears.  But  it  appears  to  me  that  this  objection  is 
not  well  founded,  and  stands  inter  Apices  juris ;  for  the  new  patent  should 
be  granted  for  the  whole  term  of  fourteen  years,  from  the  27th  of  December, 
and  the  legal  effect  is  the  same  as  it  would  be,  if  the  patent  was  specifically 
renewed  for  two  successive  terms  of  seven  years.  The  new  patent  is 
granted  for  the  unexpired  term  only,  from  the  date  of  the  grant,  viz.,  for 
the  unexpired  period  existing  on  the  8th  of  July,  1845,  by  reference  to  the 
original  grant  in  December,  1828.  It  is  also  suggested,  that  the  patent 
ought  not  to  have  been  in  trust  for  the  heirs  at  law  of  the  said  W. 
Woodworth,  their  heirs,  administrators  or  assigns."  But  this  is,  at  most, 
a  mere  verbal  error,  if  indeed  it  has  any  validity  whatsoever ;  for  the  new 
patent  will,  by  operation  of  law,  enure  to  the  sole  benefit  of  the  parties,  in 
whose  favor  the  law  designed  it  should  operate,  and  not  otherwise.  It  seems 
to  me  that  the  case  is  directly  within  the  purview  of  the  10th  and  13th 
sections  of  the  act  of  1836,  ch.  357,  taking  into  consideration  their  true 
intent  and  objects. 

Another  objection  urged  against  the  continuation  of  the  injunction  is,  that 
the  breach  of  the  patent  assigned  in  the  original  bill,  can  have  no  applica- 
tion to  the  new  patent,  and  there  is  no  ground  to  suggest,  that,  since  the 
injunction  was  granted,  there  has  been  any  new  breach  of  the  old  patent,  or 
any  breach  of  the  new  patent.  But  it  is  by  no  means  necessary,  that  any 
such  new  breach  should  exist.  The  case  is  not  like  that  of  an  action  at  law 
for  the  breach  of  a  patent,  to  support  which,  it  is  indispensable  to  establish 
a  breach  before  the  suit  was  brought.  But  in  a  suit  in  equity,  the  doctrine 
is  far  otherwise.  A  bill  will  lie  for  an  injunction,  if  the  patent  right  is 
admitted  or  has  been  established,  upon  well-grounded  proof  of  an  appre- 
hended intention  of  the  defendant  to  violate  the  patent  right.  A  bill,  quia 
timet,  is  an  ordinary  remedial  process  in  equity.  Now,  the  injunction 
already  granted,  (supposing  both  patents  to  be  for  the  same  invention,)  is 
prima  facie  evidence  of  an  intended  violation,  if  not  of  an  actual  violation." 

In  the  last  case,  Mr.  Justice  AVoodbury  said,  "  The  original  patent  for 
fourteen  years,  given  in  December,  1828,  expired  in  1842,  and  though  it 
was  extended  by  the  board  for  seven  years  more,  which  would  last  till  1849, 
and  by  Congress  for  seven  more,  which  would  not  expire  till  1856,  yet  all 
of  these  patents  were  surrendered  July  8th,  1845,  and  a  new  one  taken  out 
for  the  whole  twenty-eight  years  from  December,  1828.  This  was  done, 
also,  with  some  small  amendments  or  corrections,  in  the  old  specification  of 
1828.  After  these  new  letters-patent  for  the  whole  term,  no  assignment 
having  been  made  to  Washburn  and  Brown,  but  only  one  previously  on  the 


220  LAW    OF    PATENTS. 

amended  specification,  after  the  expiration  of  the  term  for  which 
the  original  patent  was  granted,  and  pending  the  existence  of 
an  extended  term  of  seven  years.  Such  surrender  and  renewal 
may  be  made  at  any  time  during  such  extended  term.^ 

*§,  185.  Specifications  may  also  be  amended  by  another  pro- 
cess, that  of  filing  a  disclaimer,  whenever,  through  inadvertence, 
accident,  or  mistake,  the  original  claim  was  too  broad,  claiming 
more  than  that  of  which  the  patentee  was  the  original  or  first 
inventor,  provided  some  material  and  substantial  part  of  the 
thing  patented  is  justly  and  truly  his  own.  Such  a  disclaimer 
may  be  filed  in  the  patent  office  by  the  patentee,  his  administra- 
tor, executors,  and  assigns,  whether  of  the  whole  or  of  a  sec- 


2d  of  January,  1843,  the  plaintiffs  contend  that  all  the  previous  letters  being 
surrendered,  and  a  new  specification  filed,  and  new  letters  issued,  any  con- 
veyance of  any  interest  under  the  old  letters  is  inoperative  and  void  under 
the  new  ones  ;  and  hence  that  Washburn  and  Brown  possess  no  interest  in 
these  last,  and  are  improperly  joined  in  the  bill. 

But  my  impression,  as  at  present  advised,  is,  that  when  a  patent  has  been 
surrendered,  and  new  letters  are  taken  out  with  an  amended  specification, 
the  patent  has  been  always  considered  to  operate,  except  as  to  suits  for  vio- 
lations committed  before  the  amendment,  from  the  commencement  of  the 
original  term.  The  amendment  is  not  because  the  former  patent  or  specifi- 
cation was  utterly  void,  as  seems  to  be  the  argument,  but  was  defective  or 
doubtful  in  some  particular,  which  it  was  expedient  to  make  more  clear. 
But  it  is  still  a  patent  for  the  same  invention.  It  can  by  law  include  no  new 
one,  and  it  covers  only  the  same  term  of  time  which  the  former  patent  and 
its  extensions  did. 

In  the  present  case,  these  are  conceded  to  have  been  the  facts  ;  and  it  is 
an  error  to  suppose  that  on  such  facts  the  new  letters  ought  to  operate  only 
from  their  date.  By  the  very  words  of  those  letters,  no  less  than  by  the 
reasons  of  the  case  as  just  explained,  they  relate  back  to  the  commence- 
ment of  the  original  term,  and  for  many  purposes  should  operate  from  that 
time." 

'  Wilson  V.  Rousseau,  4  Howard,  646.  If  a  new  patent,  issued  on  a  sur- 
render of  an  old  one,  be  void  for  any  cause  connected  with  the  acts  of  pub- 
lic officers,  it  is  questionable  whether  the  original  patent  must  not  be  consid- 
ered in  force  till  its  term  had  expired.  Woodworth  v.  Hall,  1  Woodb,  & 
M.  389. 


RENEWAL  OR  AMENDMENT  OF  A  PATENT.        221 

tional  interest  in  the  patent ;  and  it  will  be  thereafter  taken  and 
considered  as  part  of  the  original  specification,  to  the  extent  of 
the  interest  of  the  disclaimant  in  the  patent,  and  by  those 
claiming  by  or  under  him  subsequent  to  the  record  thereof.^ 

*§.  186,  Patents  are  sometimes  extended  by  special  Acts  of 
Congress,  passed  upon  the  application  of  the  patentees.  But 
by  the  Act  of  July  4th,  1836,  c.  357,  «§,  18,  the  Secretary  of 
State,  the  Commissioner  of  the  Patent  office,  and  the  Solicitor 
of  the  Treasury  were  constituted  a  board  of  commissioners  to 
hear  evidence  for  and  against  the  extension  prayed  for,  and  to 
decide  whether,  having  due  regard  to  the  public  interest  therein, 
it  is  just  and  proper  that  the  term  of  the  patent  should  be 
extended,  because  the  patentee  has  failed  to  obtain  a  reasonable 
remuneration.  The  commissioners  being  satisfied  that  the 
patent  ought  to  bo  renewed,  it  was  made  the  duty  of  the  Com- 
missioner of  Patents  to  make  a  certificate  on  the  original  patent, 
showing  that  it  is  extended  for  a  further  term  of  seven  years 
from  the  expiration  of  the  first  term. 

<§>  187.  But  by  a  very  recent  statute  this  power  is  vested 
solely  in  the  Commissioner  of  Patents,  who  is  required  to 
refer  the  application  to  the  principal  examiner,  having  charge  of 
the  class  of  inventions  to  which  the  case  belongs,  and,  upon  his 
report,  to  grant  or  refuse  the  patent,  upon  the  same  principles 
and  rules  that  have  governed  the  board  provided  by  the  former 
act.^ 

'  Act  of  Mar.  3,  1837,  ^  7.  As  to  the  effect  of  a  disclaimer  on  actions. 
See  the  Chapter  on  Remedy. 

*  Act  of  Cong.  May  27,  1848,  ^  1.  This  act  declares  that  no  patent 
shall  be  extended  for  a  longer  term  than  seven  years. 


19* 


PART   III. 

TRANSMISSION   OF   THE  INTEREST 


IN 


LETTERS-PATENT. 


PART    III. 

TRANSMISSION  OF  THE  INTEREST  IN  LETTERS- 
PATENT. 


CHAPTER   I. 

OF    ASSIGNMENTS    AND    LICENSES. 

<§>  188.  The  Act  of  Congress  of  July  4,  1836,  <§>  11,  provides 
"  that  every  patent  shall  be  assignable  in  law,  either  as  to  the 
whole  interest,  or  any  undivided  part  thereof,  by  any  instrument 
in  writing ;  which  assignment,  and  also  every  grant  and  convey- 
ance of  the  exclusive  right  under  any  patent,  to  make  and  use, 
and  to  grant  to  others  to  make  and  use  the  thing  patented 
within  and  throughout  any  specified  part  or  portion  of  the 
United  States,  shall  be  recorded  in  the  patent  office  within  three 
months  from  the  execution  thereof,  for  which  the  assignee  or 
grantee  shall  pay  to  the  commissioner  the  sum  of  three  dollars." 

<§>  189.  The  interest  that  is  thus  made  assignable  by  statute 
is  undoubtedly  assignable  at  common  law.  But  it  has  been 
deemed  proper  to  regulate  the  assignment  of  patents  by  statute. 
An  invention  may  be  assigned  for  the  patent  before  it  is  taken 
out,  so  as  to  vest  in  the  assignee  the  exclusive  interest  when 
the  patent  has  issued ;  but  the  application  must  be  made  and 
the  specification  duly  sworn  to  by  the  inventor,  and  the  assign- 
ment must  be  recorded.^     The  interest  in  a  patent  may  also  be 


»  Act  of  Mar.  3,  1837,  «^  6.     Herbert,  v.  Adams,  4  Mas.  15  ;  Dixon  v. 


Q26  LAW     OF     PATENTS. 

assi"-ned  by  operation  of  law,  in  case  of  the  bankruptcy  of  the 
patentee,  as  well  as  by  his  voluntary  assignment.  There  is  no 
question  tliat  a  patent  already  obtained  passes  to  assignees  in 
bankruptcy  ;  and  in  England  it  has  been  held  that  a  patent 
issued  after  an  act  of  bankruptcy  and  an  assignment  by  the 
commissioners,  but  before  the  bankrupt  had  obtained  his  certifi- 
cate, passes  to  the  assignees.^  It  is  necessary,  however,  that 
the  invention  should  have  been  perfected,  and,  at  least,  that 
the  bankrupt  inventor  should  have  applied  for  a  patent.  It  was 
said  in  the  case  just  cited,  that  the  schemes  which  a  man  has  in 
his  head,  or  the  fruits  which  he  may  make  of  them  do  not  pass  ; 
but  if  he  has  carried  his  schemes  into  effect,  and  thereby 
acquired  a  beneficial  interest,  that  interest  is  of  a  nature  to  be 
affected  by  an  assignment  in  bankruptcy.  Under  our  system,  I 
conceive  that  such  an  interest  would  have  been  acquired,  after 
the  application  for  a  patent.  The  party  has  then  done  all  that 
the  law  requires  for  the  creation  of  the  interest,  and  the  issue 
of  the  patent  furnishes  him  with  the  evidence  of  his  exclusive 
right.  Whether  an  invention  perfected  and  reduced  to  practice, 
capable  of  supporting  a  patent,  but  for  which  no  application  had 
been  made  for  a  patent,  at  the  time  when  the  assignment  in 
bankruptcy  attaches  to  the  bankrupt's  eflfects,  would  pass  to  the 
assignees,  is  a  more  difficult  question.  The  mere  material  in 
which  the  invention  had  been  incorporated  would  undoubtedly 
pass,  but  this  is  distinguished  from  the  invention  itself,  which 
has  not  become  a  vested  interest  under  the  patent  law,  until  the 
proper  application  has  been  made  by  the  proper  party,  who 
must  be  the  inventor  and  no  one  else.  It  would  seem  that  the 
assignees  would  not  render  themselves  liable  to  an  action  for 
infringement,  at  the  suit  of  the  subsequent  patentee  (the  bank- 


Moyer,  4  Wash.  71,  72.     So  also,  it  has  been  held  that  a  contract  may  be 
made  to  convey  a  future  invention,  as  well  as  a  past  one,  and  for  any  improve- 
ment or  maturing  of  a  past  one ;  and  that  a  bill  in  equity  will  lie  to  compel 
a  specific  performance.     Nesmith  v.  Calvert,  1  Woodb.  &  M.  34. 
'  Hesse  v.  Stevenson,  3  Bos.  &  P.  565. 


OF    ASSIGNMENTS    AND    LICENSES.  227 

rupt)  for  selling  such  materials,  as  in  the  case  of  a  newly 
invented  machine,  patented  after  the  property  in  the  materials 
had  passed  to  them  ;  ^  but  whether  the  purchaser  could  thus 
acquire  any  right,  as  against  the  inventor,  to  use  those  materials 
in  the  shape  of  the  invention,  as  intended  to  be  used  by  the 
inventor,- who  had  used  due  diligence  in  obtaining  his  patent, 
may  admit  of  doubt. 

<§)  190.  The  statute  renders  it  necessary  to  record  the  assign- 
ment in  the  Patent  office.  Three  classes  or  degrees  of  interest 
by  assignment,  and  no  others,  are  thus  required  to  be  recorded  ; 
first,  an  assignment  of  the  whole  patent ;  second,  an  assign- 
ment of  an  undivided  part  of  the  whole  patent ;  and  third,  a 
grant  or  conveyance  of  the  exclusive  right  under  the  patent  for 
any  specified  part  or  portion  of  the  United  States.  Assign- 
ments, of  these  several  classes,  must  be  recorded  in  the  Patent 
office  within  three  months  of  the  execution  thereof,  to  affect 
intermediate  bond  fide  purchasers,  without  notice.  But  it  has 
been  held  that  in  other  respects  the  statute  is  merely  directory, 
and  that  any  subsequent  recording  will  be  sufficient  to  pass  the 
title  to  the  assignee.- 


'  Sawin  v.  Guild,  1  Gallis.  485. 

2  Brooks  V.  Byam,  2  Story's  R.  526;  Pitts  v.  Whitman,  lb.  609,  614. 
In  this  last  case,  Mr.  Justice  Story  said,  "  The  first  objection  taken  upon 
the  motion  for  a  new  trial  is,  that  the  deed  of  assignment  from  John  A. 
Pitts  to  the  plaintiff,  dated  on  the  17th  of  April,  1838,  was  not  recorded  in 
the  Patent  office  until  the  19lh  of  April,  1841,  after  the  present  suit  was 
commenced  ;  whereas  it  ought  to  have  been  recorded  within  three  months 
after  the  execution  thereof.  By  the  Patent  Act  of  1793,  ch.  55,  §  4,  every 
assignment  when  recorded  in  the  office  of  the  Secretary  of  State,  was  good 
to  pass  the  title  of  the  inventor,  both  as  to  right  and  responsibility  ;  but  no 
time  whatever  was  prescribed  within  which  the  assignment  was  required  to 
be  made.  By  the  11th  section  of  the  Act  of  1836,  ch.  357,  it  is  provided, 
'•  That  every  patent  shall  be  assignable  in  law,  either  as  to  the  vi-hoje  inter- 
est or  any  undivided  part  thereof,  by  any  instrument  in  writing  ;  which 
assignment,  and  also  every  grant  and  conveyance  of  an  exclusive  right  under 
any  patent  to  make  and  use,  and  to  grant  to  others  to  make  and  use,  the 


0-23  LAW    OF    PATENTS. 

(§,191.  But  the  assignee  can  maintain  no  suit,  in  law  or  equity, 


thing  patented  within  and  throughout  any  specified  portion  of  the  United 
States,  shall  be  recorded  in  the  Patent  office  within  three  months  from  the 
execution  thereof."  Now,  it  is  observable,  that  there  are  no  words  in  this 
enactment,  which  declare  that  the  assignment,  if  not  recorded,  shall  be 
utterly  void ;  and  the  question  therefore,  is,  whether  it  is  to  be  construed  as 
indispensable  to  the  validity  of  an  assignment,  that  it  should  be  recorded 
within  the  three  months,  as  a  sine  qua  non;  or  whether  the  statute  is  merely 
directory  for  the  protection  of  purchasers.  Upon  the  best  reflection  which  I 
have  been  able  to  bestow  upon  the  subject,  my  opinion  is,  that  the  latter  is 
the  true  interpretation  and  object  of  the  provision.  My  reasons  for  this 
opinion  are,  the  inconvenience  and  difRculty,  and  mischiefs,  which  would 
arise  upon  any  other  construction.  In  tlie  first  place,  it  is  difficult  to  say 
why,  as  between  the  patentee  and  the  assignee,  the  assignment  ought  not 
to  be  held  good  as  a  subsisting  contract  and  conveyance,  although  it  is  never 
recorded  by  accident,  or  mistake,  or  design.  Suppose  the  patentee  has 
assigned  his  whole  right  to  the  assignee  for  a  full  and  adequate  consideration, 
and  the  assignment  is  not  recorded  within  the  three  months,  and  the  assignee 
should  make  and  use  the  patented  machine  aftejcwards  ;  could  the  patentee 
maintain  a  suit  against  the  assignee  for  such  making  or  use  as  a  breach  of 
the  patent,  as  if  he  had  never  parted  with  his  right  1  This  would  seem  to 
be  most  inequitable  and  unjust;  and  yet  if  the  assigrment  became  a  nullity 
and  utterly  void  by  the  non-recording  within  the  three  months,  it  would 
seem  to  follow  as  a  legitimate  consequence,  that  such  suit  would  be  main- 
tainable. So  strong  is  the  objection  to  such  a  conclusion,  that  the  learned 
counsel  for  the  defendant  admitted  at  the  argument,  that  as  betvi'een  the 
patentee  and  the  assignee  the  assignment  would  be  good,  notwithstanding 
the  omission  to  record  it.  If  so,  then  it  would  seem  difficult  to  see  why  the 
assignment  ought  not  to  be  held  equally  valid  against  a  mere  wrong  doer, 
piratically  invading  the  patent  right. 

Let  us  take  another  case.  Could  the  patentee  maintain  a  suit  against  a 
mere  wrong  doer,  after  the  assignment  was  made,  and  he  had  thereby  parted 
with  all  his  interest,  if  the  assignment  was  not  duly  recorded  ?  Certainly  it 
must  be  conceded  that  he  could  not,  if  the  assignment  did  not  thereby  become 
a  mere  nullity,  but  was  valid  as  between  himself  and  the  assignee;  for  then 
there  could  accrue  no  damage  to  the  patentee,  and  no  infringement  of  his 
rights  under  the  patent.  Then,  could  the  assignee  in  such  a  case,  maintain  a 
suit  for  the  infringement  of  his  rights  under  the  assignment  ?  If  he  could  not, 
then  he  would  have  rights  without  any  remedy.  Nay,  as  upon  this  suppo- 
sition, neither  the  patentee  nor  the  assignee  could  maintain  any  suit  for  an 
infringement  of  the  patent,  the  patent  right  itself  would  be  utterly  extin- 
guished in  point  of  law,  for  all  transferable  purposes.     Again  ;  could  the 


OF    ASSIGNMENTS    AND    LICENSES.  229 

upon  the  patent,  either  as  a  sole  or  as  a  joint  plaintiff,  against 

assignee,  in  such  a  case,  maintain  a  suit  for  a  subsequent  infringement  against 
the  patentee?  If  he  could,  then  the  patentee  would  be  ia  a  worse  predic- 
ament than  a  mere  wrong-doer.  If  he  could  not,  then  the  assignment 
would  become  in  his  hands,  in  a  practical  sense,  worthless  as  it  would  be 
open  to  depredations  on  all  sides.  On  the  contrary,  if  we  construe  the  10th 
section  of  the  act  to  be  merely  directory,  full  effect  is  given  to  the  apparent 
object  of  the  provision,  the  protection  of  purchasers.  Why  should  an 
assignment  be  required  to  be  recorded  at  all?  Certainly  not  for  the  benefit 
of  the  parties,  or  their  privies  ;  but  solely  for  the  protection  of  purchasers, 
who  should  become  such,  bona  fide,  for  a  valuable  consideration,. without 
notice  of  any  prior  assignment.  By  requiring  the  recording  to  be  within 
three  months,  the  act,  in  effect,  allows  that  full  period  for  the  benefit  of  the 
assignee,  without  any  imputation  or  impeachment  of  his  title  for  laches  in 
the  intermediate  time.  If  he  fails  to  record  the  assignment  within  the  three 
months,  then  every  subsequent  bona  fide  purchaser  has  a  right  to  presjjme 
that  no  assignment  has  been  made  within  that  period.  If  the  assignment 
has  not  been  recorded  until  after  the  three  months,  a  prior  purchaser  ought, 
upon  the  ground  oHaches,  to  be  preferred  to  the  assignee.  If  he  purchases 
after  the  assignment  has  been  recorded,  although  not  within  the  three 
months,  the  purchaser  may  justly  be  postponed,  upon  the  ground  of  wa/a 
fides,  or  constructive  notice  of  the  assignment.  In  this  way,  as  it  seems  to 
me,  the  true  object  of  the  provision  is  obtained,  and  no  injustice  is  done  to 
any  party.  In  respect  to  mere  wrong-doers,  who  have  no  pretence  of  right 
or  title,  it  is  difficult  to  see  what  ground  of  policy  or  principle  there  can  be 
in  giving  them  the  benefit  of  the  objection  of  the  non-recording  of  the  assign- 
ment. They  violate  the  patent  right  with  their  eyes  open  ;  and  as  they 
choose  to  act  in  fraudem  legis,  it  ought  to  be  no  defence,  that  they  meant  to 
defraud  or  injure  the  patentee,  and  not  the  assignee.  Indeed,  if  the  defence 
were  maintainable,  it  would  seem  to  be  wholly  immaterial  whether  they 
knew  of  the  assignment  or  not. 

In  furtherance  then  of  right  and  justice,  and  the  apparent  policy  of  the 
act,  ut  res  magis  valeat  quam  pereat,  and  in  the  absence  of  all  language 
importing  that  the  assignment,  if  unrecorded  shall  be  deemed  void,  I  con- 
strue the  provision  as  to  recording  to  be  merely  directory,  for  the  protection 
of  bond  fide  purchasers  without  notice.  And  assuming  that  the  recording 
within  the  three  months  is  not  a  prerequisite  to  the  validity  of  the  assign- 
ment, it  seems  to  me  immaterial  (even  admitting  that  a  recording  at  some 
time  is  necessary,)  that  it  is  not  made  until  after  the  suit  is  brought.  It  is 
like  the  common  case  of  a  deed  required  by  lav?  to  be  registered,  on  which 
the  plaintiff  founds  his  title,  where  it  is  sufficient,  if  it  be  registered  before 
the  trial,  although  after  the  suit  is  brought;  for  it  is  still  admissible  in  evi- 
20 


230  LAW    OF    PATENTS. 

third  persons,  until  his  assignment  has  been  recorded,  according 
to  tlie  requisitions  of  the  statute.^     For  the  purposes  of  such  a' 
suit,  however,  it  will  be  sufficient  if  the  assignment  is  recorded 
at  any  time  before  the  trial  or  hearing.^ 

<^  192.  An  assignment  vests  in  the  assignee  an  interest  in  the 
patent,  indefeasible  by  act  of  the  patentee,  so  that  the  patentee 
cannot,  by  a  surrender  of  his  patent,  affect  the  rights  of  an 
assignee,  to  whom  he  has  previously  granted  the  whole  or  a 
part  of  the  patent,  without  the  consent  of  such  assignee.^  In 
fact,  the  statute  which  authorizes  a  surrender  and  reissue  of  a 
patent,  on  account  of  a  defective  specification,  expressly  saves 
the  rights  of  assignees  in  the  patent,  by  this  clause ;  "  and  in 
case  of  his  (the  patentee's)  death,  or  any  assignment  by  him, 
made  of  the  original  patent,  a  similar  right  (that  of  surrender 
and  reissue)  shall  vest  in  his  executors,  administrators,  or  as- 
signees." ^  Strictly,  therefore,  an  assignee  should  be  a  party 
to  the  surrender ;  but  if  he  is  not,  and  the  surrender  is  made 
by  the  patentee,  and  the  patent  is  reissued  to  him,  it  seems  that 
assignments,  made  before  the  surrender,  are  not  vacated,  but  the 
patent  remains  the  same,  in  contemplation  of  law,  and  the  inter- 
ests of  assignees  remain  the  same,  without  any  new  assignment.^ 

dence  as  a  deed  duly  registered."     See  also  Boyd  v.  McAlpin,  3  McLean's 
R.  427. 

'  Wyeth  V.  Stone,  1  Story's  R.  273. 

*  Pitts  V.  Whitman,  ut  supra. 

3  Woodworth  v.  Stone,  3  Story's  R.  749,  750. 

*  Act  of  1836,  ^  13. 

*  Woodworth  t).  Hall,  1  Woodbury  &  Minot,  248, 256.  "  The  original  patent 
for  fourteen  years,  given  in  December,  1823,  expired  in  1842,  and  though  it 
was  extended  by  the  board  for  seven  years  more,  which  would  last  till  1849, 
and  by  congress  for  seven  more,  which  would  not  expire  till  1856,  yet 
all  of  these  patents  were  surrendered  July  8th,  1845,  and  a  new  one  taken 
out  for  the  whole  twenty-eight  years,  from  December,  1828.  This  was 
done,  also,  with  some  small  amendments  or  corrections,  in  the  old  specifica- 
tion of  1828.  After  these  new  letters-patent  for  the  whole  term,  no  assign- 
ment having  been  made  to  Washburn  and  Brown,  but  only  one  previously, 
on  the  2d  of  January,  1843,  the  plaintiffs  contend  that  all  the  previous  letters 


OF    ASSIGNMENTS    AND    LICENSES.  231 

<§>  193.  A  fortiori,  if  the  assignee  of  a  patent  has  consented 
to  the  surrender,  although  he   is  not  a  party  on  the  record  of 


being  surrendered,  and  a  new  specification  filed,  and  new  letters  issued,  any 
conveyance  of  any  interest  under  the  old  letters  is  inoperative  and  void 
under  the  new  ones;  and  hence,  that  Washburn  and  Brown  possess  no  inter- 
est in  these  last,  and  are  improperly  joined  in  the  bill. 

But  my  impression,  as  at  present  advised,  is,  that  when  a  patent  has  been 
surrendered,  and  new  letters  are  taken  out  with  an  amended  specification, 
the  patent  has  been  always  considered  to  operate,  except  as  to  suits  for  vio- 
lations committed  before  the  amendment,  from  the  commencement  of  the 
original  term.  The  amendment  is  not  because  the  former  patent  or  specifi- 
cation was  utterly  void,  as  seems  to  be  the  argument,  but  were  defective  or 
doubtful  in  some  particular,  which  it  was  expedient  to  make  more  clear. 
But  it  is  still  a  patent  for  the  same  invention.  It  can  by  law  include  no  new 
one,  and  it  covers  only  the  same  term  of  time  which  the  former  patent  and 
its  extensions  did.  In  the  present  case,  these  are  conceded  to  have  been  the 
facts,  and  it  is  an  error  to  suppose,  that  on  such  facts,  the  new  letters  ought 
to  operate  only  from  their  date.  By  the  very  words  of  those  letters,  no  less 
than  by  the  reasons  of  the  case,  as  just  explained,  they  relate  back  to  the 
commencement  of  the  original  term,  and  for  many  purposes  should  operate 
from  that  time.  I  do  not  say  for  all,  as  an  exception  will  hereafter  be 
noticed.  This  is  in  strict  analogy  to  amended  writs  and  amended  judgments, 
which  for  most  purposes,  have  the  same  effect  as  if  the  amended  matter 
was  in  them  originally.     - 

Again,  if  such  were  not  the  result  generally,  the  new  letters  would  be 
treated  as  taking  out  a  new  patent,  or  an  old  one  in  a  form  then  first  valid  ; 
and,  in  such  a  view,  would,  of  course,  run  fourteen  years  from  the  date  of 
the  new  letters,  instead  of  only  fourteen  from  the  issue  of  the  original 
letters  ;  or  if  they  had  been  extended  as  here,  fourteen  longer,  they  would 
not  run  only  twenty-eight  years  from  the  beginning  of  the  original  term, 
that  is,  December,  1828,  as  here,  but  twenty-eight  years  from  July,  1845, 
the  date  of  the  new  letters. 

Besides  these  considerations,  it  has  been  held,  that  recoveries  under  the 
original  patent,  are  evidence  after  the  new  letters  and  new  specification,  to 
strengthen  the  title  of  the  plaintiff  so  as  to  obtain  an  injunction  ;  thus  treat- 
ing the  patent  as  one  and  the  same,  and  the  conveyance  of  it  once,  there- 
fore, for  a  specified  term,  as  good  for  the  term,  whether  an  amended  specifi- 
cation be  filed  or  not  before  the  term  closes.  See  Orr  v.  Littlefield,  1  Woodb. 
&  M.  p.  13.  Also,  Orr  v.  Badger,  before  Justice  Sprague,  February, 
1845. 

It  would  be  a  little  strange,  that  a  recovery  under  the  new  and  amended 


03-2  LAW     OF     PATENTS. 

the  application  at  the  patent  office,  it  enures  to  his  benefit  and 
becomes  his  act,  and  he  is  properly  made  a  party  in  any  suits 
brought  for  infringement  within  the  territory  covered  by  the 
assignment,^  But  the  assignee  or  grantee,  under  the  original 
patent,  does  not  acquire  any  right  under  the  extended  patent, 
which  may  be  obtained  pursuant  to  the  18th  section  of  the  act 
of  1836,  unless  such  right  be  expressly  conveyed  to  him  by  the 
patentee.^     But  assignees,  who  were  in  the  use  of  a  patented 

and  corrected  specification,  should  be,  as  is  another  argument  for  the  defend- 
ant, any  stronger  evidence  of  right  than  a  recovery,  even  when  the  specifi- 
cation was  more  objectionable.  Independent  of  these  circumstances,  it  is 
averred  in  the  bill  as  amended,  that  Washburn  and  Brown  have  adopted  and 
approved  of  the  new  specification  ;  and  that  they  claim  under  their  contract, 
and  to  the  extent  of  it,  all  the  rights  conferred  by  it  on  the  patentee.  There 
is,  moreover,  a  clause  in  the  act  of  July  4,  1836,  ch.  357,  ^  13,  which  seems 
to  have  been  designed  to  dispose  of  such  objections  ;  and  though  it  does  not 
mention  contracts  or  assignments,  it  is  quite  broad  and  comprehensive  enough 
to  cover  them.  It  is,  "  the  patent,  so  reissued  together  with  the  corrected 
descriptions  and  specifications,  shall  have  the  same  effrxt  and  operation  in 
law  on  the  trial  of  all  actions  hereafter  commenced  for  causes  subsequently 
occurring,  as  though  the  same  had  been  originally  filed  in  such  corrected 
form  before  the  issuing  of  the  original  patent." 

It  would  be  very  doubtful,  also,  whether  a  misjoinder  of  parties  as  plain- 
tiffs in  an  application  of  this  kind,  could  defeat  a  prayer  for  an  injunction 
not  to  use  a  machine  in  which  any  of  them  were  interested.  At  law,  such 
a  misjoinder  could  be  objected  to  only  in  abatement,  as  the  act  sounds  ex 
(kVtcto  (1  Ch.  PI.  75  ;)  and  probably  it  could  not  be  objected  to  at  all  in  equity, 
though  in  the  final  judgment,  of  course  it  would  be  entered  up  in  favor  of 
those  alone  who  appeared  to  have  some  right  and  interest  to  be  protected. 

As  the  claims  of  two  of  the  plaintiffs,  however,  have  been  already  proved 
and  established  in  several  recoveries  before  the  new  letters  ;  and  the  con- 
iract  now  offered,  under  which  they  claim,  confers  on  them  a  right  to  use 
fifty  planing  machines  within  certain  territory,  including  this  city  ;  and 
there  is  a  covenant  by  the  grantees  of  that  right  not  to  sell  to  difl^erent  per- 
sons liberty  to  use  others  within  those  limits,  during  the  time  of  Washburn 
and  Brown's  contract,  their  "interest  within  them  would  seem  to  be  suffi- 
ciently exclusive  to  make  them  properly  plaintiffs,  and  entitled  to  judg- 
ment." 

'  Woodworth  v.  Stone,  3  Story's  R.  749. 

»  Woodworth  ;•.  Sherman,  2  Story's  R.  171  ;  Wilson  v.  Rousseau,  4 
Howard,  646. 


OF    ASSIGNMENTS    AND    LICENSES.  233 

machine  at  the  time  of  the  renewal,  have  still  a  right  to  use  the 
machine,  under  the  clause  of  the  statute  which  declares  that 
"  the  benefit  of  such  renewal  shall  extend  to  assignees  and 
grantees  of  the  right  to  use  the  thing  patented  to  the  extent  of 
their  respective  interests  therein."  ^ 

<§)  194.  When  a  disclaimer  is  to  be  filed,  under  the  7th  and 
9th  sections  of  the  Act  of  1837,  an  assignee  of  the  whole 
patent  will  be  the  proper  party  to  file  it ;  and  if  the  patent  has 
been  previously  assigned  in  part,  it  has  been  held  that  the  dis- 
claimer will  not  operate  to  the  benefit  of  such  an  assignee  in 
any  suit  by  him,  at  law  or  in  equity,  unless  he  joined  in  the  dis- 
claimer.^ 

<§.  195.  The  distinction  between  an  assignment  and  a  license 
relates  to  the  interest  in  the  patent,  as  distinguished  from  the 
right  to  use  the  thing  patented,  or  to  practise  the  invention. 
An  assignment  is  a  grant  in  writing  of  the  whole  or  a  part  of 
the  exclusive  right  vested  in  the  patentee  by  the  patent ;  and 
such  a  part  may  be  designated  as  an  undivided  part  of  the 
whole  patent,  extending  wherever  the  patent  extends,  or  as  a 
grant  of  the  exclusive  right  within  a  particular  district.  Each 
of  these  grants  may  carry  with  it  the  right  to  grant  to  others 
the  power  of  making  and  using  the  thing  patented,  and  in  no 
degree  diminishes  the  right  of  the  patentee  ;  it  does  not  ^er  se 
carry  the  right  to  grant  to  others  the  power  of  exercising  the 
invention,  although  it  may  involve  the  right  of  selling  the  spe- 
cific thing  made,  with  the  incidental  right  of  using  it.  Thus 
when  the  patentee  sells  to  another  a  patented  machine,  made 
by  himself,  or  permits  such  person  to  make  the  machine,  the 
party  thus  authorized  becomes  a  licensee,  with  the  right  of  sell- 
ing the  machine,  which  carries  with  it  the  right  of  using  it. 
But  that  party  has  no  interest  in  the  patent ;  he  cannot  author- 

^  Wilson  V.  Rousseau,  ut  supra. 
'  Wyeth  V.  Stone,  1  Story's  R.  273. 
20* 


234  LAW    OF    PATENTS. 

ize  others  to  make  the  machine  ;  nor  does  the  permission 
extended  to  him  diminish  in  any  degree,  the  exclusive  right  of 
the  patentee  to  make  or  to  authorize  others  to  make  the  patented 
machine.  So,  where  the  subject  of  the  patent  is  a  compound 
or  composition  of  matter,  if  the  patentee  authorizes  another  to 
make  and  sell  the  article,  that  party  becomes  a  licensee,  with 
the  rio-ht  of  selling  the  article  he  may  make  to  others,  to  be  used 
by  them,  in  the  way  of  consumption,  for  the  purposes  for  which 
it  is  intended,  but  he  has  no  interest  in  the  patent,  and  no 
power  to  grant  to  others  any  portion  of  the  exclusive  right  of 
making  the  thing,  which  is  vested  in  the  patentee.^ 

<§)  196.  Upon  this  distinction  it  may  often  be  necessary  to 
determine  whether  a  particular  instrument  amounts  to  an  assign- 
ment, or  only  to  a  license.  Our  statute  seems  to  assume  and 
proceed  upon  the  clear  distinction,  that  every  grant  which  em- 
braces the  exclusive  right  under  the  patent,  either  as  to  a  part 
or  the  whole,  is  an  assignment ;  and  it  requires  such  grants  to 
be  recorded.  The  test  to  be  applied,  therefore,  is,  whether  the 
instrument  vests  in  the  grantee  the  exclusive  right,  either  for  the 
whole  country,  or  for  a  particular  district,  of  making  and  using 
the  thing  patented,  and  of  granting  that  right  to  others.  If  it 
does  so,  it  is  an  assignment.  But  if  it  merely  grants  a  right  to 
make,  use,  and  sell  the  thing  patented,  whether  in  limited  or 
unlimited  quantities,  without  making  that  right  exclusive,  it  is  a 
license.  Thus,  where  the  patentee  granted  "  the  right  and 
privilege  of  making,  using,  and  selling  the  friction  matches," 
being  the  thing  patented,  and  the  right  "  to  employ  in  and  about 
the  manufacture,  six  persons,  and  no  more,  and  to  vend  said 
matches  in  any  part  of  the  United  States,"  with  a  proviso  that 
nothing  herein  contained  should  prevent  or  restrict  the  patentee 
from  "  making  and  vending  the  same,  or  of  selling  and  conveying 

'  Brooks  V.  Byam,  2  Story's  R.  525,  538,  539,  542.  In  this  case  Mr. 
Justice  Story  held  that  the  true  construction  of  the  statute  is,  that  a  license 
is  not  required  to  be  recorded. 


OF    ASSIGNMENTS    AND    LICENSES.  235 

similar  rights  and  privileges  to  others,"  with  a  further  proviso 
that  the  grantee  "  shall  not  manufacture  the  said  matches  in  any 
place  within  forty  miles  of  M. ; "  it  was  held  that  this  was  a 
license  or  authority  to  make  and  vend  the  matches,  without  any  . 
exclusive  right  of  making  them,  and  consequently  did  not  require 
to  be  recorded  under  the  statute.^  The  same  would  be  true  of 
a  grant  to  make  and  use  a  certain  number  of  patented  machines, 
in  a  particular  place ;  but  if  the  covenant  were  that  the  grantee 
might  make  and  use  ten  machines,  and  that  he  should  have  the 
exclusive  right  of  making  and  using  the  machines  in  a  particular 
district,  limiting  him  to  ten,  it  seems  that  it  would  be  an  assign- 
ment, provided  the  grantee  were  authorized  to  grant  to  others 
the  right  to  make  and  use  any  of  the  ten  machines.^  In  such  a 
case  as  this,  the  patentee  would  have  limited  the  exercise  of  his 
own  privilege  to  ten  machines,  and  would  have  granted  the 
whole  of  his  privilege,  as  he  had  seen  fit  to  limit  it,  to  the 
grantee,  who  would  thus  have  acquired  an  interest  in  the  patent. 
But  if  the  parties  to  such  an  instrument  were  mutually  to  agree 
to  open  the  subject  of  the  contract  again,  the  patentee  might 
enlarge  the  exclusive  privilege  indefinitely  as  to  the  quantity  of 
machines  ;  but  the  relations  of  the  parties  would  still  be  those 
of  assignor  and  assignee,  as  long  as  the  exclusive  right  should 
be  vested  in  the  grantee. 

«§,  197.  Still,  if  the  grant  of  an  exclusive  right  to  work  under 
the  patent  appears,  upon  the  tenor  of  the  whole  instrument,  to 
have  been  intended  by  the  parties  to  operate  as  a  license  and 
not  as  an  assignment,  it  seems  that  it  should  be  so  construed ; 
and  such  an  intention  will  be  evinced  by  provisos  for  determining 
the  license  and  by  the  reservation  of  a  rent  or  per  centage  on  the 
gross  sales  or  manufactures,  instead  of  granting  an  interest  in  the 
profits  of  working  the  patent.-^    But  whether  such  an  instrument, 

'  Brooks  V.  Byam,  ut  supra. 

*  Woodworlh  v.  Wilson,  4  How.  712. 

*  Protheroe  v.  May,  Webs.  Pat.  Cas.  415.     In  this  case  the  Court  of  Ex- 


236  LAW     OF    PATENTS. 

conferring  the  exclusive  right  for  a  particular  district,  would 
amount  to  an  assignment,  under  our  statute,  or  to  such  a  grant 
as  requires  to  be  recorded,  will  further  depend,  it  would  seem, 
upon  the  fact  of  their  being  a  right  vested  in  the  grantee  to  grant 
to  others  the  "  right  to  make  and  use  the  thing  patented." 

<§,  198.  Whether  a  license  is  assignable  must  depend  upon 
its  terms.  A  mere  license  to  the  party,  without  mentioning  his 
assigns,  is  of  course  nothing  more  than  the  grant  of  a  power, 
or  the  dispensation  with  a  right  or  remedy,  and  confers  a  per- 
sonal right  upon  the  licensee  which  is  not  transmissible  to  any 
other  person.  It  seems,  however,  that  the  use  of  the  word 
assigns,  in  the  granting  part  of  such  an  instrument  will  not 
necessarily  operate  to  make  a  license  assignable,  when  from  the 
tenor  of  the  whole  instrument  it  appears  to  have  been  intended 
as  a  personal  privilege.^  But  whether  a  license  is  assignable 
or  not,  as  to  the  entirety  of  the  privilege,  it  is  still  more  ques- 
tionable whether  it  is  apportionable,  so  as  to  permit  the  licensee 
to  grant  rights  to  others  to  work  the  patent,  by  subdividing  the 
rights  that  may  have  been  granted  to  himself.     This  question 


chequer,  upon  a  case  sent  for  their  opinion  by  the  Vice  Chancellor,  gave  a 
decided  opinion  that  an  exclusive  license  is  no  more  than  a  common  license, 
and  so  it  seems  to  be  regarded  by  our  statute,  which  does  not  treat  the  grant 
as  an  assignment,  requiring  to  be  recorded,  unless  there  is  added  to  the 
exclusive  right  of  making  and  using,  the  right  to  grant  to  others  to  make  and 
use  the  thing  patented.  The  case  of  Woodworth  v.  Wilson,  4  How.  712, 
contains  an  instrument  granting  the  exclusive  right  to  make  and  use  ten  ma- 
chines in  a  particular  district.  The  instrument  is  in  form  a  license  for  the 
gross  sum  of  fifteen  hundred  dollars.  The  point  did  not  arise  whether  it 
ought  to  have  been  recorded,  nor  does  the  fact  appear  whether  it  had  been 
recorded.  The  question  was  whether  the  patentee  still  retained  such  an  in- 
terest as  to  render  him  a  proper  party  to  a  bill  in  equity  with  the  grantee, 
brought  in  the  district  to  which  the  grant  related.  The  court  held  that  the 
patentee  was  properly  joined  in  the  suit.  There  was  no  grant  of  the  right 
to  grant  to  others  to  make  and  use  ;  but  merely  a  grant  autliorizing  the 
grantee  to  "  construct  and  use  "  ten  machines  within,  &c.  This  instrument, 
therefore,  I  conceive  to  have  been  a  license,  not  necessary  to  be  recorded. 
'  Brooks  V.  Byam,  2  Story's  R.  525,  544. 


OF    ASSIGNMENTS    AND    LICENSES.  237 

arose  in  a  case  already  referred  to,  where  the  patentee  of  fric- 
tion matches  granted  to  another  party  the  right  to  make,  use,  and 
sell  the  friction  matches,  and  "  to  have  and  to  hold  the  right 
and  privilege  of  manufacturing  the  said  matches,  and  to  employ 
in  and  about  the  same  six  persons,  and  no  more,  and  to  vend 
the  said  matches  in  the  United  States."  The  licensee  after- 
wards undertook  to  sell  and  convey  to  a  third  person  "  a  right 
of  manufacturing  friction  matches  according  to  letters-patent, 
&,c.,  in  said  town  of  A.,  to  the  amount  of  one  right,  embra- 
cing one  person  only  so  denominated  in  as  full  and  ample  a 
manner  to  the  extension  (extent)  of  the  said  one  right,  as  the 
original  patentee."  Mr.  Justice  Story  held  that  every  convey- 
ance of  this  sort  must  be  construed  according  to  its  own  terms 
and  objects,  in  order  to  ascertain  the  true  intent  and  meaning 
of  the  parties  ;  and  that  in  this  case,  the  interest  under  the 
license  was  an  entirety,  incapable  of  being  split  up  into  distinct 
rights,  each  of  which  could  be  assigned  to  different  persons  in 
severalty.^ 

1  Brooks  r.  Byam,  2  Story's  R.  525,  543.  The  reasoning  of  the  learned 
judge  was  as  follows :  "  The  other  question  as  to  the  indivisibility  of  the 
license,  granted  to  Brown,  involves  considerations  of  more  nicety  and  diffi- 
culty. By  the  agreement  between  Brown  and  Brooks,  (18th  of  September, 
1837,)  it  was  agreed  by  Brown  to  sell  and  convey  unto  Brooks  "  a  right  of 
manufacturing  friction  matches  according  to  letters  patent,  granted  to 
Phillips,  &c.,  in  the  said  town  of  Ashburnham,  to  the  amount  of  one  right, 
embracing  one  person  only,  so  denominated,  in  as  full  and  ample  a  manner 
to  the  extension  of  the  said  one  right  as  the  original  patentee  ;  "  and  Brown 
further  agrees  "to  go  to  Ashburnham  and  assist  Brooks  in  learning  the  art 
and  mystery  of  manufacturing  such  friction  matches,  &c.,  &c.  ;  "  and  also, 
"  not  to  sell  any  right  of  manufacturing  said  friction  matches,  or  of  vending 
the  same  to  any  person  living,  or  intending  to  live,  to  manufacture  or  vend, 
said  matches  within  forty  miles  of  said  Ashburnham."  The  question,  then, 
is,  whether  the  license  or  privilege  granted  by  the  patentee  to  Brown  is  not 
an  entirety,  and  incapable  of  being  split  up  into  distinct  rights,  each  of  which 
might  be  assigned  to  different  persons  in  severalty.  I  do  not  meddle  with 
another  point,  and  that  is,  whether  the  entirety  of  the  license  or  privilege  to 
Brown  was  capable  of  being  assigned,  though  if  it  were  intended  to  be  a 
personal  privilege  or  license,  it  might  open  a  ground  for  argument,  notwith- 


238  LAW     OF     PATENTS. 

<§>  199.  The  relations  of  the  patentee  and  the  hcensee,  with 


standing  the  use  of  the  word  "assigns."  That  point  does  not  arise  in  the 
present  case  ;  for  here  the  whole  license  or  privilege  is  not  sold  or  assigned  ; 
but  one  right,  embracing  one  person  only.  It  has  been  well  said,  that  the 
rit^ht  or  license  may  be  transmissible,  though  not  apportionable.  There  is 
some  obscurity  in  the  language  of  the  instrument,  which  makes  it  somewhat 
difficult  to  give  a  definite  interpretation  to  it.  Browo's  privilege  or  license 
is  at  most  to  himself  and  his  assigns,  and  "to  employ  in  and  about  the 
manufacturing  of  the  matches  six  persons  and  no  more."  Brown  agrees  to 
sell  to  Brooks  "  one  right,  embracing  one  person."  Now  the  privilege  or 
license  to  Brown,  (assuming  it  to  be  capable  of  assignment)  is  to  him,  and 
to  his  assigns  to  employ  six  persons.  Whoever  is  employed  is  to  be 
employed  by  Brown  and  his  assigns.  It  would  seem  to  be  a  reasonable 
interpretation  of  this  language  to  say,  that  all  of  these  persons  should  be 
employed  by  one  and  the  same  party,  either  all  by  Brown,  or  all  by  his 
assigns.  But  the  sub-agreement  with  Brooks  conveys  to  him  one  right  in 
severalty,  embracing  one  person,  that  is,  (as  I  understand  it)  the  right  to 
employ  one  person  in  the  manufacture  of  the  matches.  So  that,  if  this 
agreement  be  valid,  then  the  original  privilege  or  license,  granted  by  the 
patentee  to  Brown  upon  this  construction,  includes  six  distinct  and  inde- 
pendent rights,  each  of  which  may  be  granted  to  a  different  person  in 
severalty.  Now  I  must  confess,  that  such  a  construction  is  open  to  all  the 
objections  stated  at  the  bar.  It  exposes  the  patentee  to  the  competition  of 
six  different  distinct  persons,  acting  in  severalty,  and  independently  of  each 
other.  It  may  make  an  essential  difference  to  the  patentee  in  his  own  sales, 
whether  the  whole  of  the  right  or  privilege  granted  to  Brown  be  in  the 
possession  of  one  or  more  persons,  having  a  joint  interest,  and  of  several 
persons,  each  having  a  separate  and  independent  interest.  The  danger, 
too,  to  the  patentee  of  an  abuse  or  excess  of  the  right  or  privilege  granted 
by  him  is  materially  enhanced  by  the  circumstance,  that  each  of  the  sub- 
holders  may  be  acting  at  different  places  at  the  same  time,  and  the  nature 
and  extent  of  their  claim  and  use  of  the  right  or  privilege  may  be  difficult 
for  him  to  ascertain,  and  leave  him  without  any  adequate  remedy  for  any 
such  excess  or  abuse  of  it.  The  language  ought,  in  my  judgment,  to  be 
exceedingly  clear,  that  should  lead  a  court  to  construe  an  instrument  of  this 
sort,  granting  a  single  right  or  privilege  to  a  particular  person  or  his  assigns, 
as  also  granting  a  right  or  license  to  split  up  the  same  right  into  fragments 
among  many  persons  in  severalty,  and  thus  to  make  it  apportionable  as  well 
as  transmissible.  The  patentee  might  well  agree  to  convey  a  single  right 
as  an  entirety  to  one  person  to  manufacture  the  matches  and  employ  a  fixed 
number  of  persons  underh  im,  when  he  might  be  wholly  opposed  to  apportion- 
ing the  same  right  in  severalty  among  many  persons." 


OF    ASSIGNMENTS    AND    LICENSES.  239 

regard  to  the  validity  and  extent  of  the  patent,  must  depend  on 
the  terms  of  the  license.  The  taking  of  a  naked  license  or 
permission  to  work  under  a  patent,  does  not,  without  some 
recitals  or  covenants  amounting  to  an  admission,  estop  the 
licensee  from  denying  the  validity  of  the  patent,  or  the  fact  of 
infringement,  if  he  is  subsequently  proceeded  against.  It  is 
necessary  to  look  into  the  instrument,  and  to  ascertain  what 
recitals  and  covenants  will  deprive  a  licensee  of  the  defence  to 
which  all  other  persons  may  resort.  If,  by  his  agreement, 
the  licensee  has  admitted  that  the  process  or  thing  which  he 
uses  is  the  patented  process  or  thing,  and  he  is  afterwards  pro- 
ceeded against  for  not  complying  with  the  terms  of  his  agree- 
ment, it  seems  that  he  will  not  be  at  liberty  to  show,  that  he 
did  not  use  the  patented  thing  or  process.^  So,  too,  if  the 
deed  contain  recitals  or  statements  amounting  to  an  admission 
of  the  validity  of  the  patent,  either  as  to  the  novelty  or  utility 
of  the  supposed  invention,  or  the  sufficiency  of  the  specifica- 
tion, the  licensee  will  be  estopped,  in  an  action  of  covenant  for 
the  rent  or  license  dues,  to  deny  the  validity  of  the  patent,  by 
setting  up  anything  contrary  to  the  admissions  in  his  deed.^  In 
like  manner  it  has  been  held  that  a  licensee,  who  has  paid  an 
annuity  in  consideration  of  a  license  to  use  a  patent  privilege, 
which  he  has  had  the  benefit  of,  but  which  afterwards  turns 
out  to  be  void,  cannot  recover  back  the  money  he  has  paid,  in 
an  action  for  money  had  and  received.^  This  is  upon  the 
ground  that  the  licensee  has  had  the  benefit  of  what  he  stipu- 
lated for;  but  if  the  patent  turns  out  to  be  invalid,  before  a 
payment  becomes  due,  and  the  license  deed  contains  no  admis- 


»  Baird  v.  Neilson,  8  CI.  &  Fin.  726. 

*  Bowman  v.  Taylor,  2  Ad.  &  E.  278.  But  if  the  patentee  join  issue 
upon  an  allegation  made  by  a  licensee  contrary  to  an  admission  in  his  deed, 
instead  of  pleading  the  estoppel,  the  deed  will  be  evidence  for  the  patentee, 
but  will  not  as  evidence  be  conclusive.  Bowman  v.  Rostrora  2  Ad.  <fe  E. 
295. 

»  Taylor  v.  Hare,  1  N.  R.  260. 


240  LAW    OF     PATENTS. 

sion  of  its  validity,  the  licensee  may  plead  the  fact  in  answer 
to  an  action  of  covenant  for  money  reserved  by  the  license.^ 

!§,  200.  And  where  there  has  been  no  enjoyment  by  the 
licensee  who,  in  an  agreement  not  under  seal,  has  stipulated  to 
pay  a  certain  sum  for  the  right  to  use  a  patent  privilege,  the 
invalidity  of  the  patent  will  be  a  good  plea  in  bar  to  an  action 
upon  the  agreement,  on  the  ground  of  failure  of  consideration.^ 
The  competency  of  a  licensee  to  dispute  the  validity  of  a  patent 
is  a  question  which  may  also  arise  where  the  licensee  is  pro- 
ceeded against  for  an  infringement,  on  the  ground  that  he  is 
using  the  patent  contrary  to  the  conditions  in  his  license.  If, 
for  instance,  a  party  receives  a  license  to  use  a  patented 
machine,  on  condition  that  he  pay  a  stipulated  sum  on  all  the 
articles  which  he  may  manufacture  by  means  of  the  machine, 
and  after  having  been  put  in  possession  of  the  machine,  he  uses 
it,  but  refuses  to  pay  the  rent  or  license  dues,  or  to  comply  with 
any  other  condition,  he  may  be  enjoined  in  equity  for  an 
infringement.  The  sole  right  which  such  a  party  can  have  to 
use  the  machine  depends  on  the  license  ;  and  he  can  use 
under  the  license  only  by  complying  with  the  conditions;  so 


'  Hayne  v.  Maliby,  3  T.  R.  438.  This  case  was  thus  explained  by  Lord 
Coltenham,  C,  in  Neilson  v.  Fothergill,  Webs.  Pat.  Cas.  290.  "  The  case 
of  Hayne  v.  Maltby  appears  to  me  to  come  to  this,  that  although  a  party 
has  dealt  with  the  patentee  and  has  carried  on  business,  yet  that  he  may 
stop,  and  then  the  party  who  claims  to  be  patentee  cannot  recover  without 
giving  the  other  party  the  opportunity  of  disputing  his  right,  and  that  if  the 
defendant  successfully  dispute  his  right,  that  notwithstanding  he  has  been 
dealing  under  a  contract,  it  is  competent  to  the  defendant  so  to  do.  That  is 
exactly  coming  to  the  point  which  I  put,  whether,  at  law,  the  party  was 
estopped  from  disputing  the  patentee's  right,  after  having  once  dealt  with  him 
as  the  proprietor  of  that  right ;  and  it  appears  from  the  authority  of  that 
case,  and  from  the  other  cases,  that  from  the  time  of  the  last  payment,  if 
the  manufacturer  can  successfully  resist  the  patent  right  of  the  party  claim- 
ing the  rent,  that  he  may  do  so  in  answer  to  an  action  for  the  rent  for  the 
use  of  the  patent  during  that  year." 

*  Chanter  v.  Leese,  4  M   &  W.  295,  affirmed  in  error,  5  M.  &  W.  698. 


OF    ASSIGNMENTS    AND    LICENSES.  241 

that  his  use  aside  from  the  hcense  is  an  infringement.^  If,  in 
such  a  case,  the  licensee  refuses  to  pay  under  the  license,  or 
sets  up,  as  a  reason  for  not  performing  any  of  his  covenants, 
that  the  patentee  has  not  comphed  with  the  terms  of  the  con- 
tract on  his  part,  will  the  hcensee  be  permitted  to  question  the 
validity  of  the  patent,  in  any  proceeding  either  at  law  or  in 
equity,  for  using  the  patent  without  right?  This  must  depend, 
in  the  first  place,  upon  the  admissions  in  the  license  deed.  If 
the  deed  contains  no  admission  of  the  plaintiff's  title,  then  the 
licensee  will  not  be  estopped  from  denying  it ;  but  if  it  contains 
such  admissions,  and  a  fortiori,  if,  after  such  admissions,  the 
licensee  has  worked  under  the  license,  and  has  paid  the  license 
dues  before  his  refusal,  or  if  he  still  continues  to  claim  under 
the  deed,  and  excuses  his  non-payment  by  reason  of  the  non- 
performance of  some  covenant  on  the  part  of  the  patentee,  he 
will  be  estopped  from  denying  the  validity  of  the  patent,  and 
the  sole  question  will  be  whether  he  is  liable  for  an  infringe- 
ment ;  which  will  depend  upon  the  validity  of  his  excuse  for 
not  paying,  on  account  of  the  non-performance  by  the  patentee.- 
But,  in  the  second  place,  if  the  hcensee  repudiates  the  con- 
tract altogether,  and  stands  upon  the  right  of  every  man  to  use 
the  alleged  invention  because  it  is  not  new,  or  because  the 
patent  is  void  for  some  other  reason,  he  foregoes  all  benefit  of 
the  license  as  a  permission  to  use  the  invention,  and  becomes 
a  trespasser.  In  that  event,  I  conceive  that  his  solemn  admis- 
sion under  hand  and  seal,  of  the  validity  of  the  patent,  may 
still  be  used  against  him  as  an  estoppel,  both  in  an  action  and 
under  a  bill  in  equity  for  the  infringement,  unless  he  can  show 


3 
>  Brooks  u.  Stolley,a  M'Lean's  R.  523;  Neilson  v.  Fothergil],  Webs. 

Pat.  Cas.  287,  290. 

*  In  equity,  no  alleged  failure  on  the  part  of  the  patentee,  under  the  con- 
tract of  license,  will  authorize  the  use,  unless  the  licensee  does  everything 
in  his  power  to  perform  the  contract.  Brooks  v.  Stolley,  ut  supra.  If  the 
license  is  granted,  on  condition  of  a  weekly  payment,  the  payment  must  be 
made  weekly,  or  the  licensee  may  be  enjoined  for  infringing.  Ibid. 
21 


242  LAW     OF    PATENTS. 

that  he  was  deceived  and  misled,  otherwise  a  party  might 
obtain  possession  of  the  invention,  under  a  license,  and  then 
repudiate  the  contract  at  his  pleasure. 


J 


PART    IV. 

INFRINGEMENT, 

AND 

THE    REMEDY   THEREFOR. 


PART    IV. 

INFRINGEMENT   AND    THE    REMEDY   THEREFOR. 


CHAPTER    I. 


INFRINGEMENT. 


§  201.  The  statute  grants  to  the  patentee,  for  a  term  not 
exceeding  fourteen  years,  "  the  full  and  exclusive  right  and  lib- 
erty of  making,  using,  and  vending  to  others  to  be  used,  the 
invention  or  discovery ;  "  ^  and  it  gives  a  right  of  action  for 
damages,  in  case  of  "  making,  using,  or  selling "  the  thing 
patented.2  No  definition  of  what  is  to  constitute  an  infringe- 
ment is  given  in  the  statute  ;  but,  of  course,  there  is  an  infringe- 
ment of  the  right,  when  one  "  makes,  uses,  or  sells  a  thing  " 
which  another  has  the  exclusive  right  of  "  making,  using,  and 
vending  to  others  to  be  used."  But  what  constitutes  making, 
using,  and  selling,  with  reference  to  the  various  things  that  may 
be  the  subjects  of  patents,  so  as  to  interfere  with  the  exclusive 
right  of  the  patentee,  is  left  by  the  statute  for  judicial  interpre- 
tation. 

<§,  202.  An  infringement  takes  place  whenever  a  party  avails 
himself  of  the  invention  of  the  patentee,  without  such  variation 

'  Act  of  July  4,  1836,  c.  357,  §  5. 
^  Ibid.  ^  14. 

21* 


246  LAW    OF    PATENTS. 

as  will  constitute  a  new  discovery  ;  ^  or  as  it  has  also  been 
stated,  an  infringement  is  a  copy  made  after  and  agreeing  with 
the  principle  laid  down  in  the  specification. ^  There  will  be 
therefore  different  modes  in  which  patents  may  be  infringed, 


>  In  Walton  v.  Potter,  Webs.  Pat.  Cas.  585,  586,  Sir  N.  C.  Tindall,  C. 
J.  said  to  the  jury,  "  Now,  according  to  the  general  rule  upon  this  subject 
that  is  a  mere  question  of  fact,  and  peculiarity  for  the  consideration  of  a  jury, 
and  it  will  be  for  you  to  say,  under  the  circumstances  that  have  been  brought 
in  review  before  you,  whether  that  which  has  been  done  by  the  defendants 
amounts  to  such  an  infringement  or  not.     Where  a  party  has  obtained  a 
patent  for  a  new  invention,  or  a  discovery  he  has  made  by  his  own  ingenuity, 
it  is  not  in  the  power  of  any  other  person,  simply  by  varying  in  form  or  in 
immaterial  circumstances  the  nature  or  subject-matter  of  that  discovery,  to 
obtain  either  a  patent  for  it  himself,  or  to  use  it  without  the  leave  of  the 
patentee,  because  that  would  be  in  effect  and  in  substance  an  invasion  of  the 
right ;  and  therefore  what  you  have  to  look  at  upon  the  present  occasion,  is 
not  simply  whether  in  form  or  in  circumstances,  that  may  be  more  or  less 
immaterial,  that  which  has  been  done  by  the  defendants  varies  from  the  spe- 
cification of  the  plaintiff's  patent,  but  to  see  whether  in  reality,  in  substance 
and  in  effect,  the  defendants  have  availed  themselves  of  the  plaintiff's  inven- 
tion in  order  to  make  that  fabric,  or  to  make  that  article  which  they  have 
sold  in  the  way  of  their  trade ;  whether,  in  order  to  make  that,  they  have 
availed  themselves  of  the  invention  of  the  plaintiff.     The  course  which  the 
evidence  has  taken  has  made  it  not  an  immaterial,  but,  on  the  contrary,   a 
very  necessary  inquiry  for  you  upon  this  first  head  of  investigation,  to  deter- 
mine whether  the  defendant's  patent,  which  they  have  taken  out,  is  in  effect 
borrowed  from  the  plaintiff's  or  not,  because  there  can  be  no  doubt  whatever 
that  all  the  defendants  have  done  they  have  endeavored  to  clothe  themselves 
with  the  right  of  doing  by  taking  out  the  subsequent  patent  of  1839.     The 
only  evidence  of  infringement  we  have  had  before  us  is  the  purchase  at  the 
manufactory  of  the  defendants  of  that  little  piece  of  card  which  was  marked 
with  the  initials  S.  G.,  and  there  can  be  no  doubt  but  that  that  fabric  which 
was  so  produced  in  evidence  before  us,  is  made  on  the  plan  and  according  to 
the  specification  of  their  own  patent,  and  therefore  it  will  be  not  immaterial 
to  call  to  your  attention  upon  this  first  head  of  inquiry  the  specification  of 
the  plaintiff's,  and  next  that  of  the  defendant's  patent,  in  order  that  we  may 
compare  them  together,  and  see  whether  there  really  is  that  variation  in  sub- 
stance so  as  to  give  the   denomination  of  a  new  discovery  to  what  the 
defendants  have  done,  or  whether  they  are  not  following  out  the  invention  of 
the  plaintiff,  with  some  variation  in  the  description,  which  may  not  allow  it 
the  name  of  a  new  discovery." 

*  Galloway  v.  Bleaden,  Webs.  Pat.  Cas.  523. 


INFRINGEMENT. 


247 


according  to  their  subject-matter.  Our  statute  has  made  use  of 
the  phrases  "  making,  using,  and  vending  to  others  to  be  used," 
to  comprehend  the  exclusive  right  of  the  patentee  ;  and  conse- 
quently the  making,  using,  or  selling,  are  the  modes  in  which 
that  right  may  be  infringed,  according  to  the  nature  of  the  sub- 
ject-matter. We  are  now,  therefore,  to  consider  the  meaning 
of  these  phrases,  as  applied  to  the  infringement  of  the  several 
classes  of  things  which  may  be  the  subjects  of  letters-patent. 

<§.  203.  1 .  As  to  a  machine.  —  When  a  machine  is  the  subject 
of  a  patent,  the  patent  covers  both  the  machine  itself,  the  thing 
invented,  and  the  mode  or  process  of  making  it.  The  statute 
vests  in  the  patentee  the  exclusive  right  of  making  it,  the  exclu- 
sive right  of  using  it,  and  the  exclusive  right  of  vending  it  to 
others  to  be  used.  It  is,  therefore,  an  infringement  to  make  a 
patented  machine,  for  use  or  for  sale,  though  in  fact  it  is  neither 
used  nor  sold ;  ^  it  is  an  infringement  to  use  it,  though  made  by 


'  Whittemore  v.  Cutter,  1  Gallis.  429,  433.  In  this  case,  Mr.  Justice 
Story  said,  "Another  objection,  is  to  the  direction,  that  the  making  of  a 
machine  fit  for  use,  and  with  a  design  to  use  it  for  profit,  was  an  infringe- 
ment of  the  patent  right,  for  which  an  action  was  given  by  the  statute. 
This  limitation  of  the  making  was  certainly  favorable  to  the  defendant,  and  it 
was  adopted  by  the  Court,  from  the  consideration  that  it  never  could  have 
been  the  intention  .of  the  legislature  to  punish  a  man  who  constructed  such 
a  machine  merely  for  philosophical  experiments,  or  for  the  purpose  of  ascer- 
taining the  sufficiency  of  the  machine  to  produce  its  described  effects.  It  is 
now  contended  by  the  defendant's  counsel,  that  the  making  of  a  machine  is, 
under  no  circumstances,  an  infringement  of  the  patent.  The  first  section  of 
the  act  of  1793,  expressly  gives  to  the  patentee,  &c.,  "  the  full  and  exclusive 
right  and  liberty  of  making,  constructing,  using,  and  vending  to  others  to  be 
used,"  the  invention  or  discovery.  The  fifth  section  of  the  same  act  gives 
an  action  against  any  person  who  "shall  make,  devise,  and  use  or  sell,"  the 
same.  From  some  doubt,  whether  the  language  of  the  section  did  not  couple 
the  making  and  using  together  to  constitute  an  offence,  so  that  making  with- 
out using,  or  using  without  making,  was  not  an  infringement,  the  legislature 
saw  fit  to  repeal  that  section  ;  and  by  the  third  section  of  the  act  of  17th 
April,  1800,  ch.  25,  gave  the  action  against  any  person,  who  should  "make, 
devise,  use  or  sell  "  the  invention.  We  are  not  called  upon  to  examine  the 
correctness  of  the  original  doubt,  but  the  very  change  in  the  structure  of  the 


248  LAW    OF    PATENTS. 

another ;  and  it  is  an  infringement  to  sell  it,  whether  made  by 
one's  self  or  by  another  ;  because  the  statute  vests  the  exclusive 
right  of  doing  all  these  things  in  the  patentee. 

<§,  204.  The  doctrine  suggested  by  Mr.  Justice  Story,  that  the 
making  of  a  machine  for  philosophical  experiment,  or  for  the 
purpose  of  ascertaining  its  sufficiency  to  produce  the  described 
effect,  would  not  be  an  infringement,  is  founded  in  the  supposi- 
tion that  such  a  making  is  not  injurious  to  the  patentee.  It  is 
true,  that  the  making  for  the  purpose  of  using  becomes  directly 
injurious  to  the  patentee,  because  it  deprives  him  of  a  purchaser 
of  that  which  he  alone  is  authorized  to  construct  and  sell ;  and 
it  is  also  true,  that  when  the  machine  is  made  by  one  not 
the  patentee,  for  the  mere  purpose  of  experimenting  on  the  suf- 
ficiency of  the  specification,  no  profits  are  taken  away  from  the 
patentee.  There  is  therefore  a  difference,  undoubtedly,  in  the 
tendency  of  the  two  acts ;  but  it  is  not  quite  clear,  that  the 
egislature  meant  to  recognize  this  difference,  or  that  they  used 
the  words  "  make,  use,"  &c.,  in  any  other  than  their  ordinary 
sense.  The  prohibition  is  express,  that  no  other  person  shall 
"  make  "  ;  and  that  no  other  person  shall  "  use  " ;  and  Mr. 
Justice  Washington  held  that  the  motive  of  testing  the  practical 

sentence  affords  a  strong  presumption,  that  the  legislature  intended  to  make 
every  one  of  the  enumerated  acts  a  substantive  ground  of  action.  It  is 
argued,  however,  that  the  words  are  to  be  construed  distributively,  and  that 
"  making  "  is  meant  to  be  applied  to  the  case  of  a  composition  of  matter,  and 
not  to  the  case  of  a  machine.  That  it  is  clear,  that  the  use  of  certain  com- 
positions, (as  patented  pills,)  could  not  be  an  infringement,  and  unless 
making  were  so,  there  would  be  no  remedy  in  such  cases.  We  cannot  feel 
the  force  of  this  distinction.  The  word  "  making  "  is  equally  as  applicable 
to  machines,  as  to  compositions  of  matter  ;  and  we  see  no  difficulty  in  holding 
that  the  using  or  vending  of  a  patented  composition  is  aviolation  of  the  right 
of  the  proprietor.  It  is  farther  argued,  that  the  making  of  a  machine  cannot 
be  an  offence,  because  no  action  lies,  except  for  actual  damage,  and  there 
can  be  no  actual  damages,  or  even  a  rule  for  damages,  for  an  infringement 
by  making  a  machine.  We  are  however  of  opinion,  that  where  the  law- 
gives  an  action  for  a  particular  act,  the  doing  of  that  act  imports  of  itself  a 
damage  to  the  party.  Every  violation  of  a  right  imports  some  damage,  and 
if  none  other  be  proved,  the  law  allows  a  nominal  damage." 


INFRINGEMENT. 


249 


utility  of  a  machine  was  no  answer  to  a  charge  of  infringement 
by  having  "  used  "  it.^  But  it  was  held  by  Mr.  Justice  Story 
that  the  making  of  a  patented  machine  is  an  infringement  only 
when  it  is  made  for  use  or  for  sale,  and  the  doctrine  seems  to 
be  the  same  in  England.-  The  test  is,  whether  the  party  made 
the  machine  with  an  intent  to  infringe  the  patent  right,  and 
deprive  the  owner  of  the  lawful  rewards  of  his  discovery.^ 

<§.  205.  It  is  said  that  there  may  be  a  constructive  using  of  a 
patented  machine ;  as,  if  a  person  were  to  make  a  machine,  in 
violation  of  the  right  of  the  patentee,  or  purchase  it  of  one  who 
had  so  made  it,  and  then  hire  it  out  to  another  person  for  use, 
he  might,  under  some  circumstances,  be  held  responsible  for 
using  it.  There  is  a  case,  where  the  plaintiff  was  the  patentee 
of  a  machine  for  making  watch-chains,  and  it  appeared  that  the 
defendant  had  made  an  agreement  with  one  C.  to  purchase  ot 
him  all  the  watch-chains,  not  exceeding  five  gross  a  week, 
which  C.  might  be  able  to  manufacture  within  six  months,  and 
C.  had  agreed  to  devote  his  whole  time  and  attention  to  the 
manufacture  of  watch  chains,  and  not  to  sell  or  dispose  of  any 
of  them,  so  as  to  interfere  with  the  exclusive  privilege  secured 
to  the  defendant  of  purchasing  the  whole  quantity  which  it 
might  be  practicable  for  C.  to  make  ;  and  it  was  proved  that 
the  machine  used  by  C.  with  the  knowledge  and  consent  of  the 
defendant,  in  the  manufacture,  was  the  same  with  that  invented 
by  the  plaintiff,  and  that  all  the  watch-chains  thus  made  by  C. 
were  delivered  to  the  defendant  according  to  the  contract ;  the 
Supreme  Court  of  the  United  States  held  that  if  the  contract 
were  real  and  not  colorable,  and  if  the  defendant  had  no  other 
connection  with  C.  than  that  which  grew  out  of  the  contract,  it 

'  Watson  V.  Bladen,  4  Wash.  583. 

«  In  Jones  v.  Pearce,  Webs.  Pat.  Cas.  125,  Patteson,  J.  said  in  reply  to 
a  question  by  the  jury  whether  there  was  any  evidence  of  the  defendant  hav- 
ing used  or  sold  the  wheels.  —  "  The  terms  of  the  patent  are,  'without  leave 
or  license  make,'  &c.  ;  now  if  he  did  actually  make  these  wheels,  his 
making  them  would  be  a  sufficient  infringement  of  the  patent,  unless  he 
merely  made  them  for  his  own  amusement,  or  as  a  model." 

'  Sawin  v.  Guild,  1  Gallis.  485,  487. 


.)50'  LAW     OF     PATENTS. 

did  not  amount  to  a  "  using  "  by  him  of  the  plaintiff's  machine  ; 
but  that  such  a  contract,  connected  with  evidence  from  which 
the  jury  might  legally  infer,  either  that  the  machine  which  was 
to  be  employed  in  the  manufacture  of  the  patented  article  was 
owned  wholly  or  in  part  by  the  defendant,  or  that  it  was  hired 
by  the  defendant  for  six  months,  under  color  of  a  sale  of  the 
articles  to  be  manufactured  with  it,  and  with  intent  to  invade 
the  plaintiff's  patent  right,  would  amount  to  a  breach  of  his  right. ^ 


•  Keplinger  r.De  Young,  10  Wheaton,  358,  363.  Washington,  J.,  deliv- 
ering the  judgment  of  the  Court,  said,  "The  only  question  which  is  pre- 
sented by  the  bill  of  exceptions  to  the  consideration  of  this  Court  is,  whether 
the  Court  below  erred  in  the  instruction  given  to  the  jury;  and  this  must 
depend  upon  the  correct  construction  of  the  third  section  of  the  Act  of  Con- 
gress, of  the  17th  of  April,  1800,  ch.  179,  which  enacts  'that  where  any 
patent  shall  be  granted,  pursuant  to  the  Act  of  the  21st  of  February,  1793, 
ch.  156,  any  person  without  the  consent  of  the  patentee,  his  executors,  &c. 
first  obtained  in  writing,  shall  make,  devise,  use,  or  sell,  the  thing  whereof 
the  exclusive  right  is  secured  to  the  said  patentee  by  such  patent,  such  per- 
son so  offending  shall  forfeit  and  pay  to  the  said  patentee,  a  sum  equal  to 
three  times  the  actual  damage  sustained  by  such  patentee,'  &c. 

The  contract,  taken  in  connection  with  the  whole  of  the  evidence  stated 
in  the  bill  of  exceptions,  if  the  same  were  believed  by  the  jury,  formed  most 
certainly  a  strong  'case  against  the  defendant,  sufficient  to  have  warranted 
the  jury  in  inferring,  either  that  the  machine  which  was  to  be  employed  in 
the  manufacture  of  watch-chains  was  owned  in  whole  or  in  part  by  the  de- 
fendant, or  that  it  was  hired  to  the  defendant  for  six  months,  under  color  of 
a  sale  of  the  articles  which  might  be  manufactured  with  it,  and  with  intent 
to  invade  the  plaintiff's  patent  right.  Whether  the  contract,  taken  in  con- 
nection with  the  whole  of  the  evidence,  does  or  does  not  amount  to  a  hiring 
by  the  defendant  of  the  machine,  or  the  use  of  it  for  six  months,  is  a  point 
which  is  not  to  be  considered  as  being  decided  either  way  by  the  court. 
The  bill  of  exceptions  does  not  call  for  an  opinion  upon  it. 

But  the  contract  taken  by  itself,  amounted  to  no  more  than  an  agreement 
by  the  defendant  to  purchase  at  a  fixed  price,  all  the  watch  chains  not 
exceeding  five  gross  a  week,  which  Hatch  and  Kirkner  might  be  able  to  man- 
ufacture in  the  course  of  six  months,  with  any  machine  they  might  choose 
to  employ  ;  and  an  agreement  on  the  part  of  Hatch  and  Kirkner,  to  devote 
their  whole  time  and  attention  to  the  manufacture  of  the  chains,  and  not  to 
sell  or  dispose  of  any  of  them,  so  as  to  interfere  with  the  exclusive  privilege 
secured  to  the  defendant,  of  purchasing  the  whole  quantity  which  it  might 
be  practicable  for  them  to  make. 


INFRINGEMENT.  251 

<§>  206.  It  seems  to  be  in  accordance  with  the  doctrine  of  this 
case,  to  consider  that  a  using  of  a  machine  is  to  be  taken  as 


If  this  contract  was  real,  and  not  colorable,  which  is  the  obvious  mean- 
ing of  the  instruction,  and  the  defendant  had  no  other  connection  with  H.  & 
K.  in  regard  to  these  chains  than  what  grew  out  of  it,  it  would,  in  the  opin- 
ion of  the  court,  be  an  extravagant  construction  of  the  patent  law,  to  pronounce 
that  it  amounted  to  a  breach  of  the  plaintiff's  patent  right,  by  fixing  upon 
the  defendant  the  charge  of  having  used  the  plaintiff's  machine.  Such  a 
construction  would  be  highly  inconvenient  and  unjust  to  the  rest  of  the  com- 
munity, since  it  noight  subject  any  man  who  might  innocently  contract  with 
a  manufacturer  to  purchase  all  the  articles  which  he  might  be  able  to  make 
within  a  limited  period,  to  the  heavy  penalty  inflicted  by  the  act,  although 
he  might  have  been  ignorant  of  the  plaintiff's  patent,  or  that  a  violation  of  it 
would  be  the  necessary  consequence  of  the  contract.  It  might  possibly 
extend  farther,  and  affect  contracts  express  or  implied,  though  of  a  more 
limited  character,  but  equally  innocent,  as  to  which,  however,  it  is  not  the 
intention  of  the  court  to  express  any  opinion,  as  this  case  does  not  call  for  it. 

This  cause  was  argued  by  the  plaintiff's  counsel,  as  if  the  opinion  of  the 
court  .below  had  been  given  upon  the  whole  of  the  evidence.  But  this  was 
not  the  case.  No  instruction  was  asked  for  but  by  the  defendants  counsel, 
and  that  was  confined  to  a  single  part  of  the  case,  the  connection  between 
the  defendant  and  H.  &  K.,  in  regard  to  the  watch  chains  which  the  latter 
bound  themselves,  by  their  contract,  to  manufacture  and  deliver  to  the  for- 
mer. If  the  jury  had  been  of  opinion,  upon  the  whole  of  the  evidence,  that 
the  contract  was  not  a  real  one,  or  that  that  instrument  did  not  constitute 
the  sole  connection  between  those  parties,  or  that  the  transaction  was  merely 
colorable,  with  a  view  to  evade  the  law,  the  jury  were  not  precluded  by  the 
instruction  from  considering  the  plaintiff's  patent  right  as  violated,  and  find- 
ing a  verdict  accordingly. 

Had  the  plaintiff's  counsel  thought  proper  to  call  upon  the  court  for  an 
opinion  and  instruction  to  the  jury,  upon  any  points  arising  out  of  the  whole, 
or  any  part  of  the  evidence,  it  would  have  been  their  duty  to  give  an  opinion 
upon  such  points,  leaving  the  conclusion  of  fact  from  the  evidence  to  be 
drawn  by  the  jury.  But  this  course  not  having  been  pursued,  this  court  can 
take  no  notice  of  the  evidence,  although  spread  upon  the  record,  except  so 
far  as  it  is  connected  with  the  single  point  upon  which  the  opinion,  which  is 
excepted  to,  was  given.  As  to  the  residue  of  that  opinion,  that  'the  legal 
aspect  of  the  case  would  not  be  changed,  although  the  defendant  might,  on 
any  occasion,  have  supplied,  at  the  cost  of  H.  &  K.,  the  wire  from  which 
the  chains  so  manufactured  were  made,'  it  is  quite  as  free  from  objection 
as  the  preceding  part  of  it,  since  it  stands  on  precisely  the  same  principle." 


252  LAW    OF    PATENTS. 

proved,  either  when  the  party  charged  has  used  it  himself  or 

has  employed  others  to  use  it  for  him,  or  has  profited  by  the 
use  of  it.^ 


1  Woodworth  v.  Hall,  1  Woodb.  &  M.  248,  251.  In  this  case,  Mr.  Jus- 
tice Woodbury  said,  "  There  has  been  no  evidence  whatever  oflfered  in  this 
case  of  any  use  of  the  planing  machine  by  Isaac  Hall  since  his  license 
expired,  except  what  is  contained  in  the  affidavit  of  Aaron  Pratt.  This 
witness  did  not  see  him  use  it ;  but  made  a  bargain  with  him  about  the  15th 
of  July,  1845,  to  plane  for  the  witness  certain  boards  at  the  ordinary  price, 
intending  to  set  off  the  amount  against  rent  due  from  said  Isaac. 

Clement  Hall,  however,  was  present,  and  said,  'we  can  plane  them  for 
you,'  and  the  work  was  done  ;  but  the  witness  does  not  say  by  whom,  nor 
whether  in  fact  the  compensation  for  it  was  made  to  Isaac. 

Against  this,  is  the  answer  of  Isaac,  responsive  to  the  bill,  and  sworn  to, 
denying  that  he  had  ever  used  the  machine  since  his  license  expired ;  and 
this  agrees  with  Clement's  assertion  in  his  answer,  that  the  machine  was 
used  by  him  alone.  The  facts  testified  by  Pratt  might,  standing  alone,  be 
sufficient  to  justify  an  inference,  that  Isaac  had  planed  the  boards  and  used 
the  machine. 

In  such  cases,  it  may  be,  that  any  workman  on  the  machine,  though  not 
interested  in  it,  is  liable  to  be  restrained  in  order  to  prevent  evasions,  by 
treating  all  as  principals  who  are  aiding. 

It  is  a  common  case,  also,  that  if  one  does  not  in  person  perform  the  work, 
but  procures  another  to  do  it  for  his  advantage  on  a  machine  owned  by  him- 
self, he  can  still  be  restrained,  and  is  estopped  from  denying,  qui  facit  per 
alium,facit  -per  se.  Possibly,  too,  if  one  hires  another  to  do  work  on  such  a 
machine,  he  may  be  restrained.  4  Mann.  &  Grang.  179.  But  it  is  not 
necessary  to  give  a  decisive  opinion  on  this,  after  comparing  the  evidence 
with  the  denial  in  Isaac's  sworn  answer. 

After  that  answer  thus  testified  to  as  true,  the  probability  is,  and  it  is  a 
construction  not  inconsistent  with  the  veracity  of  both  Pratt  and  Isaac,  that 
the  boards  were  planed'  by  Clement  alone,  and  on  his  own  contract,  or  his 
own  assent  to  the  arrangement,  and  for  his  own  profit.  It  would  seem,  also, 
very  easy  to  produce  further  evidence  of  the  fact  of  Isaac's  using  the 
machine,  or  receiving  the  profits  from  it,  if  such  was  the  truth.  Until  it 
is  produced,  the  fairest  construction  of  the  affidavits  and  answer  are,  that 
Isaac  did  not  work  the  machine  or  profit  by  it.  If  this  construction  were 
not  the  most  reasonable,  and  did  not  reconcile  what  is  sworn  to  in  the  affida- 
vit and  answers,  the  court  would  still  be  compelled  to  refuse  to  issue  an 
injunction  against  Isaac,  on  the  affidavit  of  Pratt  alone,  for  the  want  of  evi- 
dence in  it  to  overcome  Isaac's  answer.     Because  something  more  must  be 


INFRINGEMENT.  253 

<^  207.  As  to  the  sale  of  a  patented  machine,  in  order  to  be  an 
infringement  of  the  right,  it  must  be  something  more  than  a 
sale  of  the  materials,  either  separate  or  combined  ;  it  must  be 
a  sale  of  a  complete  machine,  for  use  as  a  machine,  which  is 
patented,  in  order  to  render  the  vendor  liable  for  an  infringe- 
ment of  the  patent  by  a  "  sale."  ^ 

produced  than  the  evidence  of  a  single  witness  to  overcome  an  answer  under 
oath,  and  responsive  to  the  bill.  Carpenter  v.  Prov.  Wash.  Ins.  Co.  4  How. 
185.  Certainly,  something  more  than  the  evidence  of  one  witness,  and  he 
not  testifying  explicitly  that  Isaac  either  owned  or  worked  the  machine,  or 
received  any  of  its  profits. 

But  in  respect  to  the  liability  of  Clement  to  an  injunction,  the  testimony 
is  very  different ;  and  notwithstanding  the  several  ingenious  objections  that 
have  been  urged,  I  have  come  to  the  conclusion  that  one  ought  to  be  issued 
against  him." 

'  A  sale  of  the  materials  of  a  patented  machine  by  a  sheriff,  on  execution, 
is  not  an  infringement.  Sawin  v.  Guild,  1  Gallis.  485.  In  this  case  Mr. 
Justice  Story  said,  "  This  is  an  action  on  the  case  for  the  infringement  of  a 
patent  right  of  the  plaintiffs,  obtained  in  February,  1811,  for  a  machine  for 
cutting  brad  nails.  From  the  statement  of  facts  agreed  by  the  parties,  it 
appears,  that  the  defendant  is  a  deputy-sheriff  of  the  county  of  Norfolk,  and 
having  an  execution  in  his  hands  against  the  plaintiffs  for  the  sum  of  $  567.27 
debt,  and  costs,  by  virtue  of  his  office,  seized  and  sold,  on  said  execution, 
the  materials  of  three  of  said  patented  machines,  which  were  at  the  time 
complete  and  fit  for  operation,  and  belonged  to  the  plaintiffs.  The  purchaser, 
at  the  sheriff's  sale,  has  not,  at  any  time  since,  put  either  of  the  said  machines 
in  operation  ;  and  the  whole  infringement  of  the  patent  consists  in  the  seizure 
and  sale  by  the  defendant  as  aforesaid.  The  question  submitted  to  the  court 
is,  whether  the  complete  materials,  of  which  a  patented  machine  is  composed, 
can,  while  such  machine  is  in  operation  by  the  legal  owner,  be  seized  and 
sold  on  an  execution  against  him. 

The  plaintiffs  contend  that  it  cannot  be  so  seized  and  sold,  and  they  rely  on 
the  language  of  the  third  section  of  the  Act  of  the  17th  of  April,  1800,  ch. 
25,  which  declares  that  if  "  any  person,  without  the  consent  of  the  patentee, 
his  or  her  executors,  &c.  first  obtained  in  writing,  shall  make,  devise,  use, 
or  sell  the  thing,  whereof  the  exclusive  right  is  secured  to  the  said  patentee, 
such  person,  so  offending,  shall  forfeit,"  &c. 

It  is  a  sound  rule  of  law,  that  every  statute  is  to  have  a  sensible  construc- 
tion ;  and  its  language  is  not  to  be  interpreted  so  as  to  introduce  public 
mischiefs,  or  manifest  incongruities,  unless  the  conclusion  be  unavoidable. 
If  the  plaintiffs  are  right  in  their  construction  of  the  section  above  stated, 
22 


•254  LAW     OF    PATENTS. 

<§,  208.  The   sale   of  the  articles   produced    by  a   patented 

it  is  practicable  for  a  party  to  lock  up  his  whole  property,  however  great, 
from  the  grasp  of  his  creditors,  by  investing  it  in  profitable  patented 
machines.  This  would  undoubtedly  be  a  great  public  mischief,  and  against 
the  whole  policy  of  the  law,  as  to  the  levy  of  personal  property  in  execu- 
tion. And  upon  the  same  construction,  this  consequence  would  follow,  that 
every  part  of  the  materials  of  the  machine  might,  when  separated,  be  seized 
in  execution,  and  yet  the  whole  could  not  be,  when  united  ;  for  the  exemp- 
tion from  seizure  is  claimed  only  when  the  whole  is  combined  and  in  actual 
operation  under  the  patent. 

We  should  not  incline  to  adopt  such  a  construction,  unless  we  could  give 
no  other  reasonable  meaning  to  the  statute.  By  the  laws  of  Massachusetts, 
property  like  this  is  not  exempted  from  seizure  in  execution  ;  and  an  officer, 
who  neglected  to  seize,  would  expose  himself  to  an  action  for  damages, 
unless  some  statute  of  the  United  States  should  contain  a  clear  exception. 
No  such  express  exception  can  be  found  ;  and  it  is  inferred  to  exist  only  by 
supposing,  that  the  officer  would,  by  the  sale,  make  himself  a  wrong  doer, 
within  the  clause  of  the  statute  above  recited.  But  within  the  very  words 
of  that  clause,  it  would  be  no  offence  to  seize  the  machine  in  execution. 
The  whole  offence  must  consist  in  a  sale.  It  would  therefore  follow,  that 
the  officer  might  lawfully  seize  ;  and  if  so,  it  would  be  somewhat  strange, 
if  he  could  not  proceed  to  do  those  acts,  which  alone  by  law  could  make  his 
seizure  effectual. 

This  court  has  already  had  occasion  to  consider  the  clause  in  question, 
and  upon  mature  deliberation  it  has  held,  that  the  making  of  a  patented 
machine,  to  be  an  offence  within  the  purview  of  it,  must  be  the  making 
with  an  intent  to  use  for  profit,  and  not  for  the  mere  purpose  of  philosophical 
experiment,  or  to  ascertain  the  verity  and  exactness  of  the  specification. 
(Whittemore  v.  Cutter,  1  Gallis.  p.  429.)  In  other  words,  that  the  making 
must  be  with  an  intent  to  infringe  the  patent  right,  and  deprive  the  owner 
of  the  lawful  rewards  of  his  discovery. 

In  the  present  case,  we  think  that  a  sale  of  a  patented  machine,  within 
the  prohibitions  of  the  same  clause,  must  be  a  sale  not  of  the  materials  of  a 
machine,  either  separate  or  combined,  but  of  a  complete  machine,  with  the 
right,  express  or  implied,  of  using  the  same  in  the  manner  secured  by  the 
patent.  It  must  be  a  tortious  sale,  not  for  the  purpose  merely  of  depriving 
the  owner  of  the  materials,  but  of  the  use  and  benefit  of  his  patent.  There 
is  no  pretence,  in  the  case  before  us,  that  the  officer  had  either  sold  or  guar- 
anteed a  right  to  use  the  machine  in  the  manner  pointed  out  in  the  patent 
right.  He  sold  the  materials  as  such,  to  be  applied  by  the  purchaser  as  he 
should  by  law  have  a  right  to  apply  them.  The  purchaser  must  therefore 
act  at  hib  own  peril,  but  in  no  respect  can  the  officer  be  responsible  for  his 
conduct." 


INFRINGEMENT.  255 

machine,  or  by  a  process  which  is  patented,  is  not  an  infringe- 
ment.^ 


*  Boyd  u.  Brown,  3  M'Lean's  R.  295.  "  The  complainant  filed  his  bill, 
representing  that  he  is  the  legal  owner  of  a  certain  patent  right,  within  the 
county  of  Hamilton,  in  Ohio,  for  making  bedsteads  of  a  particular  construc- 
tion, which  is  of  great  value  to  him  ;  that  the  defendant,  professing  to  have 
a  right  under  the  same  patent,  to  make  and  vend  bedsteads  in  Dearborn 
County,  Indiana,  which  the  complainant  does  not  admit,  but  denies  ;  that  the 
defendant  sends  the  bedsteads  he  manufactures  to  Hamilton  county  to  sell, 
in  violation  of  the  complainant's  patent;  and  he  prays  that  the  defendant 
may  be  enjoined  from  manufacturing  the  article,  and  vending  it  within 
Hamilton  county,  &c. 

The  defendant  sets  up  in  his  answer  a  right  duly  assigned  to  him  to  make 
and  vend  the  article  in  Indiana,  and  that  he  is  also  possessed  of  an  improve- 
ment on  the  same  ;  and  he  denies  that  the  sales  in  Hamilton  county,  com- 
plained of  by  the  complainant,  are  made  at  his  instance,  or  for  his  benefit. 
A  motion  is  now  made  for  an  injunction,  before  the  case  is  prepared  for  a 
final  hearing. 

On  the  part  of  the  complainant,  it  is  contended  that,  by  his  purchase  of 
the  right  to  make  and  vend  the  article  within  Hamilton  county,  he  has  an 
exclusive  right  to  vend  as  well  as  to  make,  and  that  his  right  is  infringed  by 
the  sales  complained  of;  that  his  right  is  notorious,  and  is  not  only  known 
to  the  defendant,  but  to  all  those  who  ate  engaged  in  the  sales  stated.  If 
the  defendant,  who  manufactures  the  bedsteads  in  Indiana,  be  actually 
engaged  in  the  sale  of  them  in  Hamilton  county,  it  might  be  necessary  to 
inquire  whether  this  is  a  violation  of  the  complainant's  right.  But,  as  this 
fact  is  denied  in  the  defendant's  answer,  for  the  purposes  of  this  motion,  the 
answer  must  be  taken  as  true,  and  that  question  is  not  necessarily  involved. 

The  point  for  consideration  is,  whether  the  right  of  the  complainant  is 
infringed  by  a  sale  of  the  article  within  the  limits  of  the  territory  claimed  by 
the  complainant.  It  is  not  difficult  to  answer  this  question.  We  think  that 
the  article  may  be  sold  at  any  and  every  place,  by  any  one  who  has  purchased 
it  for  speculation  or  otherwise. 

There  can  be  no  doubt  that  the  original  patentee,  in  selling  rights  for 
counties  or  states,  might,  by  a  special  covenant,  prohibit  the  assignee  from 
vending  the  article  beyond  the  limits  of  his  own  exclusive  right.  But  in 
such  a  case,  the  remedy  would  be  on  contract,  and  not  under  the  patent 
law.  For  that  law  protects  the  thing  patented,  and  not  the  product.  The 
exclusive  right  to  make  and  use  the  instruments  for  the  construction  of  this 
bedstead  in  Hamilton  county,  is  what  the  law  secures,  under  his  assignment, 
to  the  complainant.     Any  one  violates  this  right  who  either  makes,  uses,  or 


256  LAW    OF    PATENTS. 

<§.  209.  But  if  the  person  who  sells  is  connected  with  the 
use  of  the  machine,  he  is  responsible  as  for  an  infringement  ; 
and  if  a  court  of  equity  have  jurisdiction  of  the  person,  such 
a  vendor  may  be  enjoined,  although  the  machine  may  be  used 
beyond  the  jurisdiction  of  the  court.^ 


sells  these  instruments  within  the  above  limits.  But  the  bedstead,  which 
is  the  product,  so  soon  as  it  is  sold,  mingles  with  the  common  mass  of 
property,  and  is  only  subject  to  the  general  laws  of  property. 

An  individual  has  a  patent  right  for  constructing  and  using  a  certain 
flouring  mill.  Now,  his  exclusive  right  consists  in  the  construction  and  use 
of  the  mill ;  the  same  as  the  right  of  the  complainant  to  construct  and  use 
the  instruments  in  Hamilton  county,  by  which  the  bedstead  is  made.  But 
can  the  patentee  of  the  mill  prohibit  others  from  selling  flour  in  his  district  1 
Certainly  he  could  not.  The  advantage  derived  from  his  right  is,  or  may 
be,  the  superior  quality  of  the  flour,  and  the  facility  with  which  it  is  manu- 
factured. And  this  sufiiciently  illustrates  the  principle  involved  in  this 
motion."     See  further,  Simpson  v.  Wilson,  4  Howard,  709. 

'  BoydiJ.  McAlpin,  3  McLean,  427,  429.  In  this  case,  the  same  learned 
judge  said,  "It  is  insisted  that  the  sale  of  the  thing  manufactured  by  the 
patented  machine  is  a  violation  of  the  patent.  But  this  position  is  wholly 
unsustainable.  The  patent  gives  "  the  exclusive  right  and  liberty  of  mak- 
ing, constructing,  using,  and  vending  to  others  to  be  used,  the  said  improve- 
ment." A  sale  of  the  product  of  the  machine  is  no  violation  of  the 
exclusive  right  to  use,  construct,  or  sell  the  machine  itself.  If,  therefore, 
the  defendant  has  done  nothing  more  than  purchase  the  bedsteads  from 
Brown,  who  may  manufacture  them  by  an  unjustifiable  use  of  the  patented 
machine,  still  the  person  who  may  make  the  purchase  from  him  has  a  right 
to  sell.  The  product  cannot  be  reached,  except  in  the  hands  of  one  who  is 
in  some  manner  connected  with  the  use  of  the  patented  machine. 

There  are  several  patents  of  mills  for  the  manufacture  of  flour.  Now,  to 
construct  a  mill  patented,  or  to  use  one,  vi'ould  be  an  infringement  of  the 
patent.  But  to  sell  a  barrel  of  flour  manufactured  at  such  mill,  by  one  who 
had  purchased  it  at  the  mill,  could  be  no  infringement  of  the  patent.  And 
the  same  may  be  said  of  a  patented  stove,  used  for  baking  bread.  The  pur- 
chaser of  the  bread  is  guilty  of  no  infringement ;  but  the  person  who  con- 
structed the  stove, or  who  uses  it,  maybe  enjoined,  and  is  liable  to  damages. 
These  cases  show,  that  it  is  not  the  product,  but  the  thing  patented,  which 
may  not  be  constructed,  sold,  or  used.  This  doctrine  is  laid  down  in  Kep- 
linger  v.  De  Young,  10  Wheat.  358.  In  that  case  watch-chains  were 
manufactured  by  the  use  of  a  patented  machine,  in  violation  of  the  right  of 


INFRINGEMENT.  257 

«§>  210.  The  Supreme  Court  of  the  United  States  have  decided 
tiiat  an  assignment  of  an  exclusive  right  to  use  a  machine,  and 
to  vend  the  same  to  others  for  use,  within  a  specified  territory, 
authorizes  the  assignee  to  vend  elsewhere,  out  of  that  territory, 
articles  manufactured  by  such  machine.^ 

<§.  211.  2.  As  to  a  manufacture  or  composition  of  matter. 
—  Assuming  that  the  word  is  used  in  our  statute  to  describe 
the  vendible  and  tangible  product  of  any  branch  of  indus- 
try,^ a  patent  for  a  "  manufacture  "  will  be  infringed  by  the 
same  acts  as  a  patent  for  a  composition  of  matter,  that  is,  by 
making,  using,  or  selling  the  thing  itself. 

the  patentee  ;  the  defendant,  by  contract,  purchased  all  the  chains  so 
manufactured,  and  the  court  held,  that,  as  the  defendant  was  only  the  pur- 
chaser of  the  manufactured  article,  and  had  no  connection  in  the  use  of  the 
machine,  that  he  had  not  infringed  the  right  of  the  patentee. 

But  in  the  case  under  consideration,  the  bill  charges  that  the  defendant,  in 
connection  with  Brown,  constructed  the  machine  patented  ;  and  that  they 
use  the  same  in  making  the  bedsteads  which  the  defendant  is  now  selling 
in  the  city  of  Cincinnati.  If  this  allegation  of  the  bill  be  true,  the  defend- 
ant is  so  connected  with  the  machine  in  its  construction  and  use  as  to  make 
him  responsible  to  the  plaintiff.  The  structure  and  use  of  the  machine  are 
charged  as  being  done  beyond  the  jurisdiction  of  the  court ;  but  having  juris- 
diction of  the  person  of  the  defendant,  the  court  may  restrain  him  from 
using  the  machine  and  selling  the  product.  When  the  sale  of  the  product 
is  thus  connected  with  the  illegal  use  of  the  machine  patented,  the  individual 
is  responsible  in  damages,  and  the  amount  of  his  sales  will,  in  a  considerable 
degree,  regulate  the  extent  of  his  liability. 

Whether,  if  the  defendant  acts  as  a  mere  agent  of  Brow^n,  who  constructed 
the  patented  machine,  and  uses  it  in  Indiana,  in  making  bedsteads,  is  respon- 
sible in  damages  for  an  infringement  of  the  patent  and  may  be  enjoined,  is  a 
question  which  need  not  now  be  determined.  Such  a  rule  would,  undoubt- 
edly, be  for  the  benefit  of  Brown,  who,  according  to  the  bill,  had  openly 
and  continually  violated  the  patent  in  the  construction  and  use  of  the  machine. 
There  are  strong  reasons  why  the  interest  of  the  principal  should,  by  an 
action  at  law,  and  also  by  a  bill  in  chancery,  be  reached  through  his  agent. 
Injunction  allowed." 

'  Simpson  v.  Wilson,  4  Howard,  709. 

*  See  Ante,  Part  I.  ch.  2,  §  100. 
22* 


258  LAW    OF    PATENTS. 

<§,  212.  In  cases  of  this  kind,  however,  some  difficulty  may 
arise  as  to  what  constitutes  a  using.  When  the  subject-matter 
is  the  thing  produced,  the  patent  will  generally  also  cover  the 
process  of  making  it ;  as  in  the  case  of  a  paint,  a  medicine,  a 
stove,  or  a  fabric  of  cloth.  In  these  cases,  a  using  of  the 
invention  would,  in  one  sense,  consist  in  putting  it  in  practice. 
But  the  statute  vests  the  exclusive  right  to  use  the  thing  itself 
in  the  patentee,  because  it  is  the  thing  produced  which  is  the 
subject  of  the  patent.  Strictly  speaking,  therefore,  the  use  of 
the  thing  at  all,  in  any  form  of  consumption  or  application, 
would  be  an  infringement.  But  as  the  purpose  of  the  law  is 
to  prevent  acts  injurious  to  the  patentee,  with  as  little  restraint 
on  the  public  as  possible,^  it  may  be  necessary  to  consider 
whether  the  word  "using"  is  employed  in  a  limited  or  an 
unhmited  sense. 

'§>213.  Whether  the  dictum  of  Mr.  Justice  Story  that  "the 
using  or  vending  of  a  patented  composition  is  a  violation  of  the 
right  of  the  proprietor,"  ^  can  be  considered  to  extend  to  every 
form  of  use,  so  as  to  give  the  proprietor  a  right  to  maintain  an 
action,  is  worthy  of  consideration.  If  a  patented  medicine  is 
made  by  one  not  authorized  to  make  it,  and  is  sold  to  a  person 
who  consumes  it,  it  would  be  a  somewhat  inconvenient  restraint 
upon  the  public  to  hold  that  the  latter  is  to  be  considered  as 
using  the  invention  in  the  sense  of  the  statute.  He  cannot 
know  that  the  article  is  not  made  by  the  true  proprietor ;  the 
probability  is  that  he  intends  to  purchase  the  genuine  composi- 
tion, and  that  he  is  deceived  into  supposing  that  he  does  pur- 
chase it.  Still,  in  strictness,  he  may  be  held  liable  to  an 
action  for  using  the  thing  itself  by  consuming  it. 

<^  214.  It  would  seem,  therefore,  in  regard  to  all  those  classes 
of  things  which  perish  in  the  using,  that  the  use  by  which  they 

»  Per  Coleridge  J.  in  Minter  v.  Williams,  Webs.  Pat.  Cas.  135,  138. 
•  Whittemore  v.  Cutter,  cited  Ante,  §  note 


INFRINGEMENT.  259 

are  consumed  may  be  regarded  as  a  violation  of  the  patent 
right ;  and  that  the  party  may  be  held  responsible  for  using, 
who  sells  or  gives  to  others  to  be  consumed,  the  article  that 
is  the  subject  of  the  patent ;  because  both  make  use  of  the 
invention  to  the  injury  of  the  patentee.  In  such  cases,  it 
matters  not  whether  the  party  makes  the  article  himself,  in 
violation  of  a  patented  process,  or  procures  it  to  be  made  by 
others.^ 

<§)  215.  Where  the  subject  of  the  patent  is  a  machine,  the 
using  it  is  altogether  prohibited  by  the  statute,  because  it  in- 
tends to  vest  in  the  patentee  the  full  enjoyment  of  the  fruits  of 
his  invention,  both  in  the  practice  of  making  the  machine,  and 
of  producing  the  effect  or  result  intended  to  be  produced  by  it. 

>§>  216,  Where  an  order  was  given  to  the  defendants  by  a  third 
person  to  manufacture  a  patented  article,  on  a  model  furnished 
by  him,  and  the  order  was  executed,  it  was  held  that  the 
defendants  were  guilty  of  an  infringement,  although,  when  they 
began  to  execute  the  order,  they  had  no  knowledge  of  the 
plaintiff's  patent.^ 

<§>  217.  3.  An  Art.  —  Where  an  art  is  the  subject-matter  of  a 
patent,  the  patent  will  be  infringed  by  exercising  or  practising 

'  Gibson  V.  Brand,  4  Man.  &  Gr.  179,  196.  Tindal,  C.  J.  "  The  breach 
alleged  in  the  declaration  is,  that  the  defendant  had  'directly  and  indirectly 
made,  used,  and  put  in  practice  the  said  invention,  and  every  part  thereof, 
and  counterfeited,  imitated,  and  resembled  the  same.'  The  proof  in  support 
of  the  breach  was  that  an  order  had  been  given  by  the  defendant,  in  England, 
for  the  making  of  silk  by  the  same  process  as  the  plaintiffs ;  which  order 
had  been  executed  in  England  ;  and  that  is  enough  to  satisfy  the  allegation 
in  the  declaration  —  that  the  defendant  made,  used,  and  put  in  practice  the 
plaintiff's  invention  —  though  the  silk  was,  in  fact,  made  by  the  agency  of 
others."  For  the  converse  of  this  case,  where  the  defendant  infringes  by 
executing  an  order  for  another  person,  see  ^  216. 

*  Bryce  v.  Dorr,  3  M'Lean,  582.  Two  of  the  articles  Avere  made  after 
notice  of  the  patent. 


260  LAW    OF    PATENTS. 

the  same  art,  which  will  constitute  a  "  using"  of  the  hivention 
or  discovery. 

«§,  218.  But  the  great  question  that  arises  when  an  infringe- 
ment is  charged  to  have  taken  place  is,  whether  the  two  things, 
one  of  which  is  said  to  be  an  infringement  upon  the  other,  are 
the  same,  or  different.  If  they  are  the  same,  there  is  an 
infringement.  If  they  are  different,  there  is  not.  But  what 
kind  and  what  degree  of  resemblance  constitute  the  identity 
which  the  patent  law  designates  as  an  infringement,  and  what 
kind  and  what  degree  of  difference  will  relieve  from  this  charge, 
are  the  difficult  and  metaphysical  questions  to  be  determined  in 
each  particular  case.^ 

<§,  219.  Learned  judges  have  often  laid  it  down  that  where 
two  things  are  the  same  in  principle,  the  one  is  an  infringement 
upon  the  other.  This  mode  of  stating  the  general  doctrine  on 
which  the  fact  of  infringement  depends  is  not  quite  satisfactory, 
because  that  which  constitutes  the  principle  of  an  invention  is 
very  likely  to  be  regarded  differently  by  different  minds.  Still, 
there  is  a  sense  in  which  the  principle  of  an  invention  is  un- 
doubtedly to  be  considered  in  determining  whether  an  infringe- 
ment has  taken  place ;  because  we  cannot  determine  whether 
there  is  a  substantial  identity  between  two  things,  without  first 


1  There  is  a  very  great  dearth  of  reported  cases,  in  our  own  books,  giving 
with  any  detail  the  facts  brought  out  at  the  trial,  on  which  the  infringement 
depended.  The  reporters  of  the  Circuit  Courts  of  the  United  States  seem  to 
have  acted  on  the  idea  that  there  is  nothing  to  be  reported  in  a  patent  cause, 
unless  some  question  of  law  is  raised  on  motion  for  a  new  trial,  or  for  arrest 
of  judgment,  &c.  ;  and  then  we  get  the  facts,  only  so  far  as  it  is  convenient 
for  the  court  to  state  them,  in  deciding  the  questions  raised.  This  is  a  great 
mistake.  A  careful  summary  of  the  evidence  given  on  every  important 
trial  for  infringement  of  a  patent,  including  the  professional  characters  and 
qualifications  of  the  witnesses,  together  with  an  accurate  description  of  the 
plaintiff's  and  defendant's  inventions,  the  rulings  of  the  court  in  the  progress 
of  the  trial,  and  the  charge  to  the  jury,  would  be  of  great  value. 


INFRINGEMENT.  261 

observing  the  distinguishing  characteristics  of  the  one  which  is 
taken  as  the  subject  of  comparison.  But  I  propose,  without 
rejecting  the  light  of  any  of  the  cases  in  which  this  language  is 
employed,  to  inquire  whether  the  fact  of  an  infringement  may 
not  be  tried  by  a  test  more  definite,  precise,  and  practical.^ 


'  The  meaning  to  be  ascribed  to  the  term  principle  of  an  invention  or  dis- 
covery, has  been  thus  commented  on  by  different  judges.  Mr.  Justice  Wash- 
ington, in  Treadwell  v.  Bladen,  4  Wash.  706,  said,  "  What  constitutes 
form,  and  what  principle,  is  often  a  nice  question  to  decide  ;  and  upon  none 
are  the  witnesses  who  are  examined  in  patent  causes,  even  those  who  are 
skilled  in  the  particular  art,  more  apt  to  disagree.  It  seems  to  me  that  the 
safest  guide  to  accuracy  in  making  the  distinction  is,  first  to  ascertain  what 
is  the  result  to  be  obtained  by  the  discovery ;  and  whatever  is  essential  to  that 
object,  independent  of  the  mere  form  and  proportions  of  the  thing  used  for 
the  purpose,  may  generally,  if  not  universally,  be  considered  as  the  princi- 
ples of  the  invention." 

In  Whittemore  v.  Cutter,  I  Gallis.  478,480,  Mr.  Justice  Story  said,  "  By 
the  principles  of  a  machine,  (as  these  words  are  used  in  the  statute)  is  not 
meant  the  original  elementary  principles  of  motion,  which  philosophy  and 
science  have  discovered,  but  the  modus  operandi,  the  peculiar  device  or  man- 
ner of  producing  any  given  effect.  The  expansive  powers  of  steam,  and  the 
mechanical  powers  of  wheels,  have  been  understood  for  many  ages  ;  yet  a 
machine  may  well  employ  either  the  one  or  the  other,  and  yet  be  so  entirely  new, 
in  its  mode  of  applying  these  elements,  as  to  entitle  the  party  to  a  patent  for 
his  whole  combination.  The  intrinsic  difficulty  is  to  ascertain,  in  complicated 
cases  like  the  present,  the  exact  boundaries  between  what  was  known  and 
used  before,  and  what  is  new,  in  the  mode  of  operation.'"  In  Barrett  v.  Hall, 
1  Mas.  447,  470,  the  same  learned  judge  said,  "  As  to  the  opinion  of  skilful 
witnesses,  whether  the  principles  of  two  machines  are  the  same,  no  person 
doubts  that  it  is  competent  evidence  to  be  introduced  into  a  patent  cause. 
But  care  should  be  taken  to  distinguish  what  is  meant  by  a  principle.  In 
the  minds  of  some  men,  a  principle  means  an  elementary  truth,  or  power, 
so  that,  in  the  view  of  such  men,  all  machines,  which  perform  their  appro- 
priate functions  by  motion,  in  whatever  way  produced,  are  alike  in  principle, 
since  motion  is  the  element  employed.  No  one,  however,  in  the  least 
acquainted  with  law,  would  for  a  moment  contend,  that  a  principle  in  this 
sense  is  the  subject  of  a  patent ;  and  if  it  were  otherwise,  it  would  put  an 
end  to  all  patents  for  all  machines,  which  employed  motion,  for  this  has  been 
known  as  a  principle  or  elementary  power,  from  the  beginning  of  time. 
The  true  legal  meaning  of  the  principle  of  a  machine,  with  reference  to  the 


062  LAW     OF     PATENTS. 

(§,  -220.  An  infringement  involves  substantial  identity,  whether 
that  identity  is  described  by  the  terms,  "  same  principle,"  same 
modus  operandi,  or  any  other.  It  is  a  copy  of  the  thing 
described  in  the  specification  of  the  patentee,  either  without 
variation,  or  with  only  such  variations  as  are  consistent  with  its 
being  in  substance  the  same  thing.^  What  will  amount  to  such 
a  substantial  identity  cannot  be  stated  in  general  terms;  we 
can  only  look  to  individual  cases  for  illustrations  and  applica- 
tions of  the  general  doctrine. 

<§>  221.  If  the  invention  of  the  patentee  be  a  machine,  it  will 


patent  act,  is  the  peculiar  structure  or  constituent  parts  of  such  machine. 
And  in  this  view  the  question  may  be  very  properly  asked,  in  cases  of  doubt 
and  complexity,  of  skilful  persons,  whether  the  principles  of  two  machines 
be  the  same  or  different.  Now,  the  principles  of  two  machines  may 
be  the  same,  although  the  form  or  proportions  may  be  different.  They 
may  substantially  employ  the  same  power  in  the  same  way,  though  the 
external  mechanism  be  apparently  different.  On  the  other  hand,  the  princi- 
ples of  two  machines  may  be  very  different,  although  their  external  struc- 
ture may  have  great  similarity  in  many  respects.  It  would  be  exceedingly 
difEcult  to  contend,  that  a  machine,  which  raised  water  by  a  lever,  was  the 
same  in  principle  with  a  machine  which  raised  it  by  a  screw,  a  pulley,  or 
a  wedge,  whatever,  in  other  respects,  might  be  the  similarity  of  the  apparatus." 
See  note  on  the  "  Principle  of  an  Invention,"  at  the  end  of  this  chapter. 

»  In  Walton  v.  Potter,  Webster's  Pat.  Cas.  58Q,  Sir  N.  C.  Tindall,  C.  J. 
said,  "  Where  a  party  has  obtained  a  patent  for  a  new  invention,  or  a  dis- 
covery he  has  made  by  his  own  ingenuity,  it  is  not  in  the  power  of  any  other 
person,  simply  by  varying  in  form  or  in  immaterial  circumstances,  the  nature 
or  subject-matter  of  that  discovery,  to  obtain  either  a  patent  for  it  himself, 
or  to  use  it  without  the  leave  of  the  patentee,  because  that  would  be  in  effect 
and  in  substance  an  invasion  of  the  right ;  and,  therefore,  what  you  have  to 
look  at  upon  the  present  occasion,  is  not  simply  whether  in  form  or  in  cir- 
cumstances, that  may  be  more  or  less  immaterial,  that  which  has  been  done 
by  the  defendants  varies  from  the  specification  of  the  plaintiff's  patent,  but 
to  see  whether,  in  reality,  in  substance,  and  in  effect,  the  defendants  have 
availed  themselves  of  the  plaintiff's  invention  in  order  to  make  that  fabric, 
or  to  make  that  article  which  they  have  sold  in  the  way  of  their  trade; 
whether,  in  order  to  make  that,  they  have  availed  themselves  of  the  inven- 
tion of  the  plaintiff." 


INFRINGEMENT.  263 

be  infringed  by  a  machine  which  incorporates  in  its  structure 
and  operation  the  substance  of  the  invention  ;  that  is,  by  an 
arrangement  of  mechanism,  which  performs  the  same  service, 
or  produces  the  same  effect  in  the  same  way,  or  substantially  in 
the  same  way.^ 


'  Wyeth  V.  Stone,  1  Story's  R.  273,  280.  In  this  case  Mr.  Justice  Story 
said,  "  The  next  point  is,  whether  the  ice-machine  used  by  the  defendants 
is  an  infringement  of  the  patent,  or,  in  other  words,  does  it  incorporate  in 
its  structure  and  operation  the  substance  of  Wyeth's  invention  ?  I  am  of 
opinion  that  it  does  include  the  substance  of  Wyeth's  invention  of  the  ice- 
cutter.  It  is  substantially,  in  its  mode  of  operation,  the  same  as  Wyeth's 
machine ;  and  it  copies  his  entire  cutter.  The  only  important  difference 
seems  to  be,  that  Wyeth's  machine  has  a  double  series  of  cutters,  on  parallel 
planes ;  and  the  machine  of  the  defendants  has  a  single  series  of  chisels  in 
one  plane.  Both  machines  have  a  succession  of  chisels,  each  of  which  is 
progressively  below  the  other,  with  a  proper  guide  placed  at  such  a  distance 
as  the  party  may  choose,  to  regulate  the  movement;  and  in  this  succession  of 
chisels,  one  below  the  other,  on  one  plate  or  frame,  consists  the  substance  of 
Wyeth's  invention.  The  guide  in  Wyeth's  machine  is  the  duplicate  of  his 
chisel  plate  or  frame  ;  the  guide  in  the  defendant's  machine  is  simply  a 
smooth  iron,  on  a  level  with  the  cutting  single  chisel  frame  or  plate.  Each 
performs  the  same  service,  substantially  in  the  same  way." 

In  Odiorne  v.  Winkley,  2  Gallis.  51,  53,  the  same  learned  judge  said, 
"  The  first  question  for  consideration  is,  whether  the  machines  used  by  the 
defendant  are  substantially,  in  their  principles  and  mode  of  operation,  like 
the  plaintiff's  machines.  If  so,  it  was  an  infringement  of  the  plaintiff's 
patent  to  use  them,  unless  some  of  the  other  matters  offered  in  the  defence 
are  proved.  Mere  colorable  alterations  of  a  machine  are  not  sufficient  to 
protect  the  defendant. 

The  original  inventor  of  a  machine  is  exclusively  entitled  to  a  patent  for 
it.  If  another  person  invent  an  improvement  on  such  machine,  he  can 
entitle  himself  to  a  patent  for  such  improvement  only,  and  does  not  thereby 
acquire  a  right  to  patent  and  use  the  original  machine  ;  and  if  he  does  pro- 
cure a  patent  for  the  whole  of  such  a  machine  with  the  improvement,  and 
not  for  the  improvement  only,  his  patent  is  too  broad,  and  therefore  void.  It 
is  often  a  point  of  intrinsic  difficulty  to  decide,  whether  one  machine  operates 
upon  the  same  principles  as  another.  In  the  present  improved  state  of 
mechanics,  the  same  elements  of  motion  and  the  same  powers  must  be 
employed  in  almost  all  machines.  The  lever,  the  wheel,  and  the  screw,  are 
powers  well  known  ;  and  if  no  person  could  be  entitled  to  a  patent  who  used 


264  LAW    OF    PATENTS. 

<§,  222.  But  if  the  difference  between  the  two  machines  is  not 
a  mere  difference  of  form  ;  if  there  is  a  material  alteration  of 


them  in  his  machine,  it  would  be  in  vain  to  seek  for  a  patent.  The  material 
question,  therefore,  is  not  whether  the  same  elements  of  motion,  or  the 
same  component  parts  are  used,  but  whether  the  given  effect  is  produced  sub- 
stantially by  the  same  mode  of  operation,  and  the  same  combination  of 
powers,  in  both  machines.  Mere  colorable  differences,  or  slight  improve- 
ments, cannot  shake  the  right  of  the  original  inventor.  To  illustrate  these 
positions  :  suppose  a  watch  was  first  invented  by  a  person,  so  as  to  mark  the 
hours  only,  and  another  person  added  the  work  to  mark  the  minutes,  and  a 
third  the  seconds  ;  each  of  them  using  the  same  combinations  and  mode  of 
operations,  to  mark  the  hours  as  the  first.  In  such  a  case  the  inventor  of 
the  second  hand  could  not  have  entitled  himself  to  a  patent  embracing  the 
inventions  of  the  other  parties.  Eacli  inventor  would  undoubtedly  be  enti- 
tled to  his  own  invention  and  no  more.  In  the  machines  before  the  court, 
there  are  three  great  stages  in  the  operations,  each  producing  a  given  and 
distinct  effect ;  —  1.  The  cutting  of  the  iron  for  the  nail ;  2.  The  griping  of 
the  nail  ;  3.  The  heading  of  the  nail.  If  one  person  had  invented  the  cut- 
ting, a  second  the  griping,  and  a  third  the  heading,  it  is  clear,  that  neither 
could  entitle  himself  to  a  patent  for  the  whole  of  a  machine  which  embraced 
the  inventions  of  the  other  two,  and,  by  the  same  mode  of  operation,  pro- 
duced the  same  effect;  and  if  he  did,  his  patent  would  be  void.  Some 
machines  are  too  simple  to  be  thus  separately  considered  ;  others,  again,  are 
so  complex,  as  to  be  invented  by  a  succession  of  improvements,  each  added 
to  the  other.  And,  on  the  whole,  in  the  present  case,  the  question  for  the 
jury  is,  whether,  taking  Reed^s  machine,  and  Perkins's  machine  together, 
and  considering  them  in  their  various  combinations,  they  are  machines  con- 
structed substantially  upon  the  same  principles,  and  upon  the  same  mode  of 
operation."  , 

One  machine  is  the  same  in  substance  as  another,  if  the  principle  be  the 
same  in  eflfect,  though  the  form  of  the  machine  be  difl^erent.  In  Boville  v. 
Moore,  Dav.  Pat.  Cas.  361,  405,  Gibbs,  Lord  C.  J.  said,  "  I  remember  that 
was  the  expedient  used  by  a  man  in  Cornwall,  who  endeavored  to  pirate  the 
steam-engine.  He  produced  an  engine,  which,  on  the  first  view  of  it,  had 
not  the  least  resemblance  to  Boulton  and  Watt's  ;  —  where  you  looked  for 
the  head  you  found  the  feet,  and  where  you  looked  for  the  feet,  you  found 
the  head  ;  but  it  turned  out  that  he  had  taken  the  principle  of  Boulton  and 
Watt's  — it  acted  as  well  one  way  as  the  other;  but  if  you  set  it  upright,  it 
was  exactly  Boulton  and  Watt's  engine.  So,  here  I  make  the  observation, 
because  I  observe  it  is  stated  that  one  acts  upwards,  and  the  other  down- 
wards ;  one  commences  from  the  bottom  and  produces  the  lace  by  an  upward 


INFRINGEMENT.  265 

structure  ;  i^  they  are  substantially  different  combinations  of 
mechanism,  to  effect  the  same  purpose  by  means  which  are 
really  not  the  same  in  substance,  then  the  one  will  not  be  an 
infringement  of  the  other.^ 

<§,  223.  But,  in  cases  where  the  patent  is  not  for  a  combina- 
tion, if  the  principle  is  applied  in  the  same  way  as  the  patentee 
has  applied  it,  then  the  absence  of  two  or  three  things  in  the 
defendant's  machine,  which  are  mentioned  in  the  specification, 


operation,  the  other  acts  from  above,  and  produces  it  by  an  operation  down- 
wards, but  that,  if  the  principle  be  the  same,  must  be  considered  as  the  same 
in  point  of  invention." 

'  Lowell  V.  Lewis,  1  Mas.  182,  191.  In  this  case  the  same  learned  judge 
said  :  "  The  manner  in  which  Mr.  Perkinses  invention  is,  in  liis  specification, 
proposed  to  be  used,  is  in  a  square  pump,  with  triangular  valves,  connected 
in  the  centre,  and  resting  without  any  box  on  the  sides  of  the  pump,  at  such 
an  angle  as  exactly  to  fit  the  four  sides.  The  pump  of  Mr.  Baker,  on  the 
other  hand,  is  fitted  only  for  a  circular  tube,  with  butterfly  valves  of  an  oval 
shape,  connected  in  the  centre,  and  resting,  not  on  the  sides  of  the  pump, 
but  on  a  metal  rim,  at  a  given  angle,  so  that  the  rim  may  not  be  exactly  in 
contact  with  the  sides,  but  the  valves  may  be.  If  from  the  whole  evidence 
the  jury  is  satisfied  that  these  differences  are  mere  changes  of  form,  without 
any  material  alteration  in  real  structure,  then  the  plaintiff  is  entitled  to 
recover  ;  if  they  are  substantially  different  combinations  of  mechanical  parts 
to  effect  the  same  purposes,  then  the  defendant  is  entitled  to  a  verdict.  This 
is  a  question  of  fact,  which  I  leave  entirely  to  the  sound  judgment  of  the 
jury." 

In  Gray  v.  James,  Peters's  Circ,  C.  R.  394,  397,  Mr.  Justice  Washington 
said  :  "  What  constitutes  a  oifference  in  principle  between  two  machines,  is 
frequently  a  question  of  difficulty,  more  especially  if  the  difference  in  form  is 
considerable,  and  the  machinery  complicated.  But  we  think  it  may  safely 
be  laid  down,  as  a  general  rule,  that  where  the  machines  are  subtantially  the 
same,  and  operate  in  the  same  manner,  to  produce  the  same  result,  they 
must  be  in  principle  the  same.  I  say  substantially,  in  order  to  exclude  all 
formal  differences  ;  and  when  I  speak  of  the  same  result,  I  must  be  under- 
stood as  meaning  the  same  kind  of  result,  though  it  may  differ  in  extent.  So 
that  the  result  is  the  same,  according  to  this  definition,  whether  the  one  produce 
.more  nails,  for  instance,  in  a  given  space  of  time,  than  the  other,  if  the  operation 
is  to  make  nails. ^^ 

23 


266  LAW    OF      PATENTS. 

will  not  prevent  the  patentee  from  recovering  for  an  infringe- 
ment.i  It  is  in  relation  to  this  question  of  substantial  identity, 
that  the  doctrine  of  mechanical  equivalents  becomes  practically 
applicable.  This  doctrine  depends  upon  the  truth  that  the 
identity  of  purpose,  and  not  of  form  or  name,  is  the  true  crite- 
rion in  judging  of  the  similarity  or  dissimilarity  of  two  pieces  of 
mechanism.  The  question  whether  one  thing  is  a  mechanical 
equivalent  for  another,  is  a  question  of  fact  for  the  jury,  on  the 
testimony  of  experts,  or  an  inspection  of  the  machines ;  and  it 
is  an  inference  to  be  drawn  from  all  the  circumstances  of  the 
case,  by  attending  to  the  consideration,  whether  the  contrivance 
used  by  the  defendant  is  used  for  the  same  purpose,  performs 
the  same  duties,  or  is  applicable  to  the  same  object,  as  the  con- 
trivance used  by  the  patentee.^     Hence,   two   things  may  be 


'  Jones  V.  Pearce,  Webs.  Pat.  Cas.  122,  124.  And  if  the  imitation  be  so 
nearly  exact  as  to  satisfy  the  jury  that  the  imitator  attempted  to  copy  the 
model,  and  to  make  some  almost  imperceptible  variation,  for  the  purpose  of 
evading  the  right  of  the  patentee,  it  may  be  considered  a  fraud  upon  the  law 
and  such  slight  variation  will  be  disregarded.     Davis  r.  Palmer,  2  Brock. 

298,  309. 

«  In  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  170,  Alderson,  B.  instructed 
the  jury  as  follows  :  "The  first  defence  is,  that  they  did  not  infringe  the 
patent.  That  is  a  question  of  fact,  with  regard  to  which,  I  do  not  think  it  is 
at  all  material  to  recapitulate  the  evidence,  for  I  understand  from  an  intima- 
tion you  have  thrown  out,  that  you  entertain  no  doubt  about  it,  that  is,  that 
the  one  is  an  infringement  of  the  other.  Upon  that  subject,  the  question 
would  be,  simply,  whether  the  defendants'  machine  was  only  colorably  dif- 
ferent, that  is,  whether  it  differed  merely  in^the  substitution  of  what  are 
called  mechanical  equivalents  for  the  contrivances  which  are  resorted  to  by 
the  patentee.  I  think  when  you  are  told  what  the  invention  of  the  plaintiffs 
really  is,  you  will  see  that  those  differences  which  Mr.  Donkin  and  others 
point  out  as  existing  between  the  one  machine  and  the  other,  are  in  truth 
differences  which  do  not  affect  the  principle  of  the  invention.  Therefore, 
the  two  machines  are  alike  in  principle,  one  man  was  the  first  inventor  of 
the  principle,  and  the  other  has  adopted  it,  and  though  he  may  have  carried 
it  into  effect,  by  substituting  one  mechanical  equivalent  for  another,  still  you 
are  to  look  to  the  substance,  and  not  to  the  mere  form,  and  if  it  is  in  sub- 
stance an  infringement,  you  ought  to  find  that  it  is  so.  If  in  principle  it  is 
not  the  same,  but  really  different,  then  the  defendants  cannot  be  said  to  have 


INFRINGEMENT.  267 

mechanical  equivalents  for  each  other  under  some  circumstan- 
ces, which  would  not  be  so  under  different  circumstances. 
Hence,  also,  the  names  as  well  as  the  forms  of  things  are  of 
comparatively  little  importance.  The  question  to  be  deter- 
mined is,  whether,  under  a  variation  of  form,  or  by  the  use  of  a 
thing  which  bears  a  different  name,  the  defendant  accomplishes 
in  his  machine,  the  same  purpose,  object,  or  effect,  as  that 
accomplished  by  the  patentee  ;  or  whether  there  is  a  real 
change  of  structure  and  purpose.^ 

infringed  the  patent.  Yoii  will,  however,  when  you  are  considering  that 
subject,  remember,  that  when  the  model  of  Mr.  Stevens's  paddles  was  put 
into  the  hands  of  Mr.  Donkin,  he  said,  at  first  sight,  that  it  was  exactly  like 
the  plaintiffs' ;  and  so  like  was  it  as  to  induce  him  to  say  that  it  was  precisely 
the  same  in  principle,  till  I  pointed  out  to  him  a  material  difference 
in  it,  and  then  it  appeared,  that  though  there  was  a  similarity  of 
execution,  there  was  a  real  difference  in  principle,  therefore  it  was  not 
similar  to  the  plaintiffs'  wheel,  though  at  first  sight  it  had  the  appearance  of 
being  similar.  So  you  see  you  ought  to  look  always  to  the  substance,  and 
not  to  the  form."  In  Webster  u.  Lowiher,  before  Lord  Tenterden,  the  jury, 
upon  the  evidence  of  sportsmen  that  the  lock  with  a  sliding  bolt  was  more 
readily  used  in  the  field,  particularly  in  wet  weather,  than  the  screw  and 
washer,  found  that  the  alteration  was  a  material  and  useful  improvement ; 
and  upon  evidence  by  mechanics,  that  a  spring  in  a  bolt  was  the  same  thing 
as  a  bolt  sliding  in  a  groove,  they  found  that  the  defendant  had  infringed 
the  patent  of  the  plaintiff.  Godson  on  Patents,  232,  233.  Here  an  impor- 
tant advantage  was  gained,  but  it  was  gained  by  the  use  of  a  mechanical 
equivalent,  and  consequently  the  new  advantage  did  not  prevent  the  defend- 
ant's lock  being  an  infringement  on  the  plaintiffs'. 

'  Thus,  in  the  old  mode  of  m.aking  chains,  the  different  parts  of  the  chain 
were  held  together  by  one  branch  of  the  chain  being  linked  within  another, 
or  else  the  different  branches  were  connected  together  by  holes  perforated 
through  each,  and  connected  by  a  pin  or  screw.  Subsequently,  a  party 
united  these  two  modes,  by  inserting  one  link  within  the  other,  and  perfora- 
ting both  by  a  pin.  A  second  inventor  then  made  a  chain  which  united 
both  these  principles  of  support,  but  in  a  different  manner,  by  using  a  piece 
of  metal,  called^  pin,  for  a  totally  different  purpose,  not  performing  the  same 
duties,  or  applicable  to  the  same  object ;  and  it  was  held  that  he  was  well 
entitled  to  a  patent  for  his  invention.  In  the  matter  of  Cutler's  patent, 
Caveat  at  the  Great  Seal,  Webs.  Pat.  Cas.  418,  430.  In  Morgan  v.  Seaward, 
Webs.  Pat.  Cas.  167,  Sir  L.  Shackwell,  V.  C.  said,  "  The  question  in  the 


.>gg  LAW     OF     PATENTS. 

«§.  2*24.  If  the  change  introduced  by  the  defendant  constitutes 
a  mechanical  equivalent,  in  reference  to  the  means  used  by  the 


case  is  simply  whether  the  eccentric  motion  is  produced  by  the  adoption 
itf  the  same  combination  of  machinery  by  the  defendants  as  the  plaintiffs 
are  entitled  exclusively  to  use.  Upon  reading  the  specification,  it  appears 
that  a  particular  combination,  insisted  on,  is  described  vindei  the  item  rods, 
bent  rods,  disc,  and  crank.  If  Mr.  Galloway  had  been  asked,  at  the  time  he 
rave  this  description,  vphelher  he  meant  the  disc  should  revolve  on  a  crank 
only,  or  that  it  should  be  made  to  revolve  by  any  other  suitable  means,  his 
reply  miffht  have  been  general  ;  but  as  h^  has  thought  proper  to  specify  a 
crank,  the  question  to  determine  is,  whether  the  eccentric  axis,  with  a  collar 
in  the  defendants'  contrivance,  is  the  same  as  a  crank  in  that  of  the  plain- 
tiffs'. The  term  crank  is  a  relative  term,  and  might  have  reference  to  some 
particular  piece  of  machinery.  The  arrangement  adopted  by  the  defendants 
is  a  most  important  variation  from  the  invention,  for  instead  of  weakening 
the  action  of  the  paddle  wheel,  that  is  preserved  entire,  unbroken,  and 
unincumbered.  That  perpetual  vibration  or  destroying  power,  as  it  might 
be  termed,  on  the  outer  part  of  the  frame  work  that  supports  the  wheel,  is 
entirely  avoided,  and  the  vibration  at  the  centre  of  the  disc  within  the  wheel 
is  transferred  from  a  part  of  the  machinery  least  able  to  bear  it  to  the  side 
of  the  vessel,  that  is  made  strong  for  the  purpose  ;  and  although  it  might  be 
said  the  action  of  the  rods  on  one  side  of  the  float  boards  might  distort  them 
a  little,  that  inconvenience  might  be  more  than  counterbalanced  by  other 
advantages.  The  alteration  is,  therefore,  not  merely  colorable,  but  prima 
facie  a  decided  improvement  by  the  introduction  into  a  combination  of  three 
things  of  that  which  is  not  noticed  at  all  in  the  specification." 

In  Gray  v.  Osgood,  Peters's  Circ.  C.  R.  394,  398,  may  be  found  a  clear 
illustration  of  the  doctrine  of  mechanical  equivalents.  Washington,  J., 
said,  "  In  the  former  [the  plaintiff's  machine]  we  find  the  two  jaws  of  a  vice, 
the  one  fixed,  and  the  one  movable  on  a  pivot  at  the  top,  which  connects 
them  together.  In  each  of  these  jaws  is  fixed  a  cutler,  the  use  of  which  is 
to  cut  off  from  the  bar  of  iron  as  much  as  will  be  necessary  to  form  the  nail, 
which,  being  separated,  falls  by  its  own  gravity  into  a  die,  which  holds  it  by 
a  firm  gripe  until  the  head  is  formed,  by  what  is  called  the  set,  or  heading 
die.  The  power  which  produces  this  double  operation,  is  a  lever  of  the  first 
order,  acting  upon  a  toggle  joint,  which  compresses  the  two  jaws,  and  con- 
sequently the  cutters  together,  and  also  the  set  in  such  a  manner  as  to  head 
the  nail.     But  the  whole  is  performed  by  the  same  movement  of  the  lever. 

It  is  impossible  to  describe  the  parts  of  the  defendant's  machine,  and  its 
operation,  without  using  the  same  expressions,  except  that  his  is  inverted, 
the  pivot  of  the  vice  being  below,  and  a  lever  of  the  second  order  embracing 


INFRINGEMENT.  269 

patentee,  and  besides  being  such  an  equivalent,  it  accomplishes 
some  other  advantage  beyond  the  effect  or  purpose  accomplished 
by  the  patentee,  it  will  still  be  an  infringement,  as  respects 
what  is  covered  by  the  patent,  although  the  further  advantage 
may  be  a  patentable  subject  as  an  improvement  upon  the  former 
invention. 


the  jaws  with  a  friction  roller,  actino:  on  an  inclined  plane  made  on  the  mov- 
ing jaw  of  the  vice,  instead  of  the  lever  of  the  first  order,  and  the  toggle- 
joint.  But  it  is  in  full  proof,  that  these  differences  as  to  the  lever  and  the 
friction  roller,  are  the  necessary  consequences  of  the  machine  being  inverted. 
After  having  made  this  comparison,  and  ascertained  the  mode  of  operation 
by  each  machine,  connected  with  the  result  of  each,  the  jury  can  find  little 
difficulty  in  deciding  whether  they  are  the  same  in  principle  or  not. 

The  witnesses  have  differed  in  opinion  as  to  the  comparative  merit  of  the 
toggle  joint  in  Perkins's  machine,  and  the  friction  roller  in  Read's.  If  their 
operation  is  precisely  the  same,  the  difference  in  form  does  not  amount  to  an 
invention  of  any  kind. 

If  the  friction  roller  is  better  than  the  toggle-joint,  which  seems  to  be  the 
opinion  of  some  of  the  defendant's  witnesses,  then  Read  has  the  merit  of 
having  discovered  an  improvement  on  Perkins's  machine,  and  no  more. 

If  the  jury  should  be  of  opinion,  that  the  parts  of  the  two  machines  which 
I  have  noticed  are  the  same  in  principle,  and  that  each  will  by  the  same 
operation  cut  and  head  nails  ;  then  it  will  follow,  that  the  forcing  slide,  the 
proximity  of  the  cutters  and  dies  to  each  other,  the  balance  wheel,  and  some 
other  additional  parts  in  Read's  machine,  which  give  it  a  great  and  acknowl- 
edged preference  over  Perkins's,  are  merely  improvements,  but  do  not  change 
the  principle  of  the  machine.  If  improvements  only,  what  is  the  legal  con- 
sequence? Most  clearly  this,  and  no  more  :  that  Perkins,  and  those  claim- 
ing under  his  patent,  have  no  right  to  use  those  improvements  without  a 
license  from  the  inventor.  But  on  the  other  hand,  neither  Read  nor  any 
other  person,  can  lawfully  use  the  discovery  of  Perkins  of  the  principal 
machine  without  a  license  from  him.  The  law  wisely  and  with  justice,  dis- 
criminates between,  and  rewards  the  merit  of  each,  by  granting  an  exclusive 
property  to  each  in  his  discovery,  but  prevents  either  from  invading  the 
rights  of  the  other.  If  then  the  jury  should  be  of  opinion,  that  the  two 
machines  are  the  same  in  principle,  it  is  no  defence  for  the  defendant's  for 
using  Perkins's  discovery,  that  they  have  improved  it,  no  matter  to  what 
extent."  So  too  it  is  wholly  immaterial  that  the  defendant's  invention  is 
better  than  that  of  the  plaintiff,  unless  there  is  a  substantial  difference  in 
principle.  Alden  v.  Dewy,  1  Story's  R.  336,  337. 
23* 


270  I-A.W    OF      PATENTS. 

4,  225.  Where  the  subject-matter  of  the  patent  is  a  manufac- 
ture, the  same  test  of  substantial  identity  is  to  be  appHed.  In 
many  cases  of  this  kind,  it  will  not  be  by  varying  in  form,  or  in 
immaterial  circumstances,  the  nature  of  the  article,  or  the  pro- 
cess by  which  it  is  produced,  that  a  party  can  escape  the 
penalties  of  infringement.  The  question  will  be,  whether  in 
reality  and  in  substance  the  defendant  has  availed  himself  of 
the  invention  of  the  patentee,  in  order  to  make  the  fabric  or 
article  which  he  has  made.  If  he  has  taken  the  same  plan  and 
applied  it  to  the  same  purpose,  notwithstanding  he  may  have 
varied  the  process  of  the  application,  his  manufacture  will  be 
substantially  identical  with  that  of  the  patentee.^ 


>  Walton  V.  Potter,  Webs.  Pat.  Cas.  585,  607.     In  this  case  Erskine,  J., 
said,  "then  there  remains  the  first  plea,  by  which  it  is  denied  that  the  defend- 
ants had  infringed  the  patent  of  the  plaintiff,  and  that  depends  upon  whether 
the  plan  which  the  defendants  have  employed,  is  in  substance  the  same  as 
the  plaintiff's,  and  whether  all  the  differences  which  have  been  introduced  by 
them  in  the  manner  of  making  their  cards,  are  not  merely  differences  in  cir- 
cumstances not  material,  and  whether  it  is  not  in  substance  and  effect  a  mere 
colorable  evasion  of  the  plaintiff's  patent.     The  jury,  it  appears  to  me,  have 
come  to  the  right  conclusion,  that  this  was  in  effect  and  substance  the  same 
as  the  plan  of  the  plaintiff.     The  plaintiff's  plan  is,  the  insertion  of  the 
teeth  through  India  rubber,  giving  to  the  teeth  the  additional  elasticity  of 
the  India  rubber,  beyond  what  the  wire  had  of  itself.     The  defendant's  plan 
is  for  the  same  purpose.     The  only  difference  is,  that  the  plaintiff  in  employ- 
ing the  India  rubber,  takes  a  slice  either  from  the  original  block,  as  it  is 
imported  into  this  country,  or  from  the  improved  block  as  it  is  used  after  it 
has  been  compressed,  and  places  it  upon  a  piece  of  holland,  for  the  purpose 
of  keeping  the  teeth  more  firmly  in  their  places,  and  then  afterwards  placing 
it  on  the  engine,  by  nailing  that  holland  on  the  engine,  or  taking  away  the 
holland,  and  cementing  the  India  rubber  to  the  cylinder,  giving  an  elasticity 
to  the  teeth  of  the  card  by  the  India  rubber,  which  is  next  to  them.     The 
defendant's  plan  is  to  saturate  a  piece  of  cloth  with  India  rubber  dissolved, 
and  then  to  lay  upon  the  surface  a  further  layer  of  India  rubber  on  both 
sides,  and  then  to  insert  the  teeth  through  the  substance  of  the  cloth  and  the 
India  rubber.     But  what  is  the  principle  upon  which  this  becomes  useful  to 
the  card,  and  the  person  who  employs  those  cards  in  the  carding  of  wool'? 
Why  it  is,  that  there  is  upon  the  surface  and  the  substance  of  the  cloth  the 
elasticity  of  the  India  rubber ;  that  the  India  rubber  is  there  in  its  natural 


INFRINGEMENT.  271 

<§>  226.  But  in  regard  to  another  class  of  cases,  it  not  unfre- 
quently  happens,  that  the  sole  evidence  of  infringement  consists 
in  the  similarity  of  the  articles,  without  any  direct  evidence  of 
their  having  been  made  by  the  same  process.  Similarity  in 
appearance  and  structure  will  not  of  itself  always  establish  an 
infringement ;  because  the  patent,  though  it  covers  the  manu- 
factured article  itself,  may  be  for  the  process  of  the  manufac- 
ture. In  such  cases,  the  inference  that  the  same  process  was 
used  must  be  drawn  from  the  evidence  ;  and  the  rule  was  laid 
down  by  Lord  Ellenborough,  that  the  similarity  of  structure  of 
two  things  is  presumptive  evidence  of  their  being  made  in  the 
same  way.^ 


state,  having  been  brought  back  into  its  natural  state  by  the  evaporation  of 
the  material  in  which  it  had  been  first  dissolved,  for  the  purpose  of  first  lay- 
ing it  on.  The  only  difference,  therefore,  is  in  the  mode  of  laying  on  the 
India  rubber  for  the  purpose  of  having  it  pierced  by  the  teelh.  That  appears 
to  me  not  to  be  a  difference  in  principle,  or  a  matter  which  so  varies  the  plan 
of  the  defendants  from  the  plan  of  the  plaintiff,  as  to  entitle  them  to  call  it 
a  new  invention,  or  different  from  the  plaintiff's.  It  seems  to  me  a  mere 
diflference  in  circumstances  not  material,  and  therefore  it  is  an  infringement 
of  the  plaintiff's  right,  and  the  verdict  of  the  jury  ought  to  stand." 

•  Huddart  v.  Grimshaw,  Webs.  Pat.  Cas.  85,  91.  This  is  a  very  instruc- 
tive case.  The  plaintiff's  patent  was  for  "  a  new  mode  of  making  great 
cables  and  other  cordage,  so  as  to  attain  a  greater  degree  of  strength  therein, 
by  a  more  equal  distribution  of  the  strain  upon  the  yarns."  Pieces  of 
cordage  made  by  the  defendant,  were  put  into  the  hands  of  the  plaintiff's 
witnesses,  and  from  the  fact  that  the  same  effect  was  produced  in  them,  and 
from  the  similarity  of  strncture,  they  gave  the  opinion  that  they  w^ere  made 
by  the  same  process  as  the  plaintiff's.  This  was  the  question  at  issue,  on 
the  point  of  infringement.  The  object  to  be  accomplished,  the  making  a 
stronger  rope,  was  clearly  open  to  the  public.  Lord  Ellenborough  said  that 
it  had  happened  to  him  in  the  same  morning,  to  give,  as  far  as  he  was  con- 
cerned, his  consent  to  the  granting  of  three  different  patents  for  the  same 
thing  ;  but  the  modes  of  attaining  it  were  all  different.  But  it  did  not  follow 
that  the  plaintiff's  method  of  attaining  the  object  was  open  to  the  public ;  and 
therefore  the  question  for  the  jury  was,  whether  the  defendant  had  used  the 
plaintiff's  method,  or  some  other. 


•272  LAW    OF    PATENTS. 

«§,  2-27.  In  such  cases,  where  the  object  to  be  accomplished 
is  open  to  the  pubhc,  notwithstanding  the  patent,  provided  it 
can  be  accomphshed  in  several  modes,  which,  as  processes,  are 
substantially  different,  an  infringement  must  be  in  respect  of  the 
process  used  by  the  patentee.  But  unless  it  appears  that  the 
article  itself  could  be  produced  by  another  process,  constituting 
an  independent  discovery,  then  an  infringement  may  be  proved 
by  the  making  of  the  article.  The  burthen  of  proof  is  always 
on  the  plaintiff',  to  show  that  his  process  has  been  infringed  ;  and 
in  the  absence  of  direct  evidence,  the  similarity  of  the  eflfect 
produced  will  generally  be  sufficient  to  establish  an  infringe- 
ment, and  if  this  is  aided  by  evidence  of  the  use  of  similar 
apparatus,  the  presumption  of  a  use  of  the  same  process  will  be 
still  stronger.^  Or,  to  state  this  in  other  words,  where  the 
invention,  or  subject-matter  of  the  patent,  is  a  manufacture,  it 
is  immaterial  by  what  process  it  is  produced,  since  the  infringe- 
ment must  consist  in  making  the  same  thing,  whether  by  one 
process  or  another.  But  where  the  invention  or  subject-matter 
is  the  process  of  making  a  particular  thing,  which  may  or  may 
not  be  made  by  more  than  one  process,  the  inquiry  will  be 
whether  it  has  been  made  by  the  use  of  the  process  covered  by 
the  patent.  In  such  cases,  the  identity  of  the  manufactured 
article  is,  with  all  the  other  circumstances,  competent  evidence, 
from  which  the  jury  are  to  infer  that  it  was  made  by  the  process 
of  the  patentee  ;  although  there  may  be  cases,  where,  from  the 
nature  of  the  article,  this  proof  would  be  less  strong,  according 
as  it  appeared  to  be  possible  or  probable  that  the  article  could 

'  See  the  preceding  note  and  the  case  there  cited.  See  also  the  more 
recent  case  of  Hall  v.  Boot,  Webs.  Pat.  Cas.  100,  102.  Hall's  patent  was 
for  a  new  method  of  singing  off  the  superfluous  fibres  upon  lace,  by  means 
of  the  flame  of  gas.  The  evidence  to  show  the  infringement,  consisted  of 
proof  that  the  defendant  had  secretly  prepared  a  gas  apparatus,  similar  to 
that  used  by  the  plaintiff,  and  that  lace  left  with  the  defendant  to  be  dressed  had 
been  returned  in  the  state  to  which  it  loould  have  been  brought  by  the  plaintiff  ^s 
process,  and  that  similar  lace  had  been  offered  for  sale  by  the  defendant.  The 
plaintiff  had  a  verdict. 


INFRINGEMENT.  273 

be  made  by  more  than  one  process.  The  burthen  of  proof  of 
the  infringement  is  upon  the  plaintiff  throughout ;  and  although 
it  does  not  appear  that  the  article  could  be  made  by  another 
process,  the  jury  must  still  draw  the  inference,  from  the  identity 
of  the  manufacture,  if  that  is  all  the  evidence,  or  from  that  and 
the  other  evidence,  that  it  was  made  by  the  patentee's  process. 

<§>  223.  But  a  much  more  difficult  class  of  cases  arises  under 
those  patents  where  the  subject-matter  is  the  application  of  a 
principle,  by  means  of  a  process  or  method,  in  order  to  produce 
a  particular  effect.  We  have  already  had  occasion  to  consider 
when  such  an  invention  or  discovery  is  the  proper  subject-matter 
of  a  patent.  We  have  seen  that  under  some  circumstances, 
the  discovery  of  a  principle  may,  by  application  in  the  arts,  be 
protected  by  a  patent ;  and  we  have  now  to  consider  how  far 
the  proprietor  of  such  a  patent  may  protect  himself  against  the 
use  of  the  same  principle  by  others  ;  or  in  other  words,  what 
will  constitute  an  infringement  of  his  right. 

*§>  229.  In  this  inquiry,  the  first  thing  to  be  attended  to  is  the 
subject-matter  of  the  patent.  A  clear  idea  is  to  be  formed  of 
the  object  of  the  patent ;  and  provided  the  specification  pro- 
perly points  out  what  the  claim  of  the  patentee  is,  it  is  not 
material  in  what  form  his  claim  is  presented,  or  whether,  in  form, 
the  patent  purports  to  be  for  a  process  or  a  manufacture. 
Wherever  the  real  subject  covered  by  the  patent  is  the  applica- 
tion of  a  principle,  in  arts  or  manufactures,  the  question,  on  an 
infringement,  will  be  as  to  the  substantial  identity  of  the  prin- 
ciple, and  of  the  application  of  the  principle  ;  and  consequently 
the  means,  machinery,  forms,  or  modifications  of  matter  made 
use  of  will  be  material,  only  so  far  as  they  affect  the  identity  of 
the  application. 

<§.  230.  Thus  in  Forsyth's  patent,  the  subject-matter  was  the 
use  and  application  of  detonating  powder  as  priming,  for   the 


274  LAW     OF      PATENTS. 

explosioTi  of  gunpowder;  and  it  was  held  that  whatever  the 
construction  of  tlie  lock  by  which  the  powder  was  to  be  dis- 
charged, the  use  of  detonating  mixture  as  priming  was  an 
infringement.^  So,  too,  where  the  claim  of  the  patentee  was 
for  "  the  application  of  a  self-adjusting  leverage  to  the  back 
and  seat  of  a  chair,  whereby  the  weight  and  the  seat  act  as  a 
counter  balance  to  the  pressure  against  the  back  of  such  chair," 
it  was  held,  that  a  chair  made  in  any  way  upon  this  principle, 
was  an  infringement.^  In  like  manner,  where  the  principle  of 
the  invention  was  the  welding  of  iron  tubes  by  pressure  of  the 
edo-es  of  the  iron,  when  heated,  without  the  use  of  a  maundrill, 
or  other  internal  support,  it  was  held  that  a  variation  from  the 
plaintiff's  mode  of  applying  the  pressure,  the  application  of  the 
principle  being  the  same,  was  still  an  infringement.^ 

<§.  231.  Clegg's  patent  was  for  \he  application  of  a  law  of 
natural  science  respecting  the  motion  of  fluids  and  solids, 
and  the  alternate  filling  and  discharging  of  a  vessel  of 
gas,  by  means  of  that  application  ;  the  object  being  to  obtain 
an  instrument  for  measuring  the  quantity  of  gas  supplied  to  the 
consumer.  The  scientific  witnesses  said,  that  the  moment  a 
practical  scientific  man  had  got  that  principle,  he  could  multiply 
without  end  the  forms  in  which  it  could  be  made  to  operate. 
The  instrument  used  by  the  defendant  was  different  in  form 
and  construction  from  that  used  by  the  patentee  ;  but  the  appli- 
cation of  the  principle,  by  means  of  a  varied  apparatus,  was  the 
same  in  both  ;  and  it  was  held  an  infringement.'* 

»  Forsyth's  Patent,  Webs.  Pat.  Cas.  95  ;  Forsyth  v.  Riviere,  lb.  97,  note. 

»  Minter  v.  Wells,  Webs.  Pat.  Cas.  127,  134. 

'  Russell  V.  Cowley,  Webs.  Pat.  Cas.  459,  462.  See  the  extracts  in  the 
note,  ante,  ^  79,  p.  69. 

*  Cited  in  Jupe  v.  Pratt,  Webs.  Pat.  Cas.  146.  Aldersnn,  B.  said,  "  It 
was  for  measuring  the  quantity  of  gas  that  was  supplied  to  every  individual, 
in  order  that  they  might  not  take  it  without  being  known.  There  never 
was  a  more  instructive  case  than  that  ;  I  remember  very  well  the  argument 
put  by  the  Lord  Chief  Baron,  who  led  that  case  for  the  plaintiff,  and  sue- 


INFRINGEMENT.  275 

•^  232.  In  Neilson's  patent,  the  invention  consistec>  in  the 
application  of  hot  air  to  the  blowing  of  furnaces  by  heating  the 
air  between  its  leaving  the  blowing  apparatus  and  its  intro- 
duction into  the  furnace,  in  any  way,  in  a  close  vessel,  exposed 
to  the  action  of  heat.  The  defendant's  apparatus  for  this  pur- 
pose was  confessedly  superior  to  what  would  be  constructed 
according  to  the  directions  in  the  plaintiff's  specification  ;  but 
it  was  held  to  be  an  infringement.^ 


ceeded.  There  never  were  two  things  to  the  eye  more  different  than  the 
plaintiff's  invention  and  what  the  defendant  had  done  in  contravention  of 
his  patent  right.  The  plaintiff's  invention  was  different  in  form  —  different 
in  construction ;  it  agreed  with  it  only  in  one  thing,  and  that  was  hy  moving 
in  the  water,  a  certain  point  was  made  to  open,  either  before  or  after,  so  as 
to  shut  up  another,  and  the  gas  was  made  to  pass  through  this  opening ;  passing 
through  it,  it  was  made  to  revolve  it ;  the  scientific  men,  all  of  them,  said,  the 
moment  a  practical  scientific  man  has  got  that  principle  in  his  head  he  can  mul- 
tiply without  end  the  forms  in  which  that  principle  can  be  made  to  operate. 
The  difficulty  which  will  press  on  you,  and  to  which  your  attention  will  be  called 
in  the  present  case,  is  this  ;  you  cannot  take  out  a  patent  for  a  principle  ;  you 
may  take  out  a  patent  for  a  principle  coupled  with  the  mode  of  carryin<r  the 
principle  into  effect,  provided  you  have  not  only  discovered  the  principle,  but 
invented  some  mode  of  carrying  it  into  effect.  But  then  you  must  start  with 
having  invented  some  mode  of  carrying  the  principle  into  effect ;  if  you  have 
done  that,  then  you  are  entitled  to  protect  yourself  from  all  other  modes  of 
carrying  the  same  principle  into  effect,  that  being  treated  by  the  jury  as 
piracy  of  your  original  invention.  But  then  the  difficulty  that  will  press  on 
you  here  is,  that  on  the  evidence  there  does  not  appear  to  have  been  any 
mode  of  carrying  the  principle  into  effect  at  all  invented  by  you." 

'  Neiison  v.  Harford,  Webs.  Pat.  Cas.  310.  Parke,  B.  said  to  the  jury, 
"  If  the  specification  is  to  be  understood  in  the  sense  claimed  by  the  plain- 
tiffs, the  invention  of  heating  the  air  between  its  leaving  the  blowing  appa- 
ratus and  its  introduction  into  the  furnace,  in  any  way,  in  any  close  vessel, 
which  is  exposed  to  the  action  of  heat,  there  is  no  doubt  that  the  defendant's 
machinery  is  an  infringement  of  that  patent,  because  it  is  the  use  of  ai^- which 
is  heated  much  more  beneficially,  and  a  great  improvement  upon  what  would 
probably  be  the  machine  constructed  by  looking  at  the  specification  alone  ; 
but  still  it  is  the  application  of  heated  air,  heated  in  one  or  more  vessels 
between  the  blowing  apparatus  and  the  furnace,  and,  therefore,  if  it  should 
turn  out  that  the  patent  is  good,  and  the  specification  is  good,  though  unques- 
tionably what  the  defendants  have  done  is  a  great  improvement  upon  what 


276  L.AW     OF     PATENTS. 

^  23T.  These  cases  show  that  when  a  party  has  invented 
some  mode  of  carrying  into  effect  a  law  of  natural  science,  or 
a  rule  of  practice,  it  is  the  application  of  that  law  or  rule  which 
constitutes  the  peculiar  feature  of  his  invention  ;  that  he  is  enti- 
tled to  protect  himself  from  all  other  modes  of  rfiaking  the  same 
application ;  and  consequently,  that  every  question  of  infringement 
will  present  the  question,  whether  the  different  mode,  be  it  better 
or  worse,  is  in  substance  an  application  of  the  same  principle.  The 
substantial  identity,  therefore,  that  is  to  be  looked  to,  in  cases  of 
this  kind,  respects  that  which  constitutes  the  essence  of  the 
invention,  viz.,  the  application  of  the  principle.  If  the  mode 
of  carrying  the  same  principle  into  effect,  adopted  by  the 
defendant,  still  shows  only  that  the  principle  admits  of  the  same 
application  in  a  variety  of  forms,  or  by  a  variety  of  apparatus, 
the  jury  will  be  authorized  to  treat  such  mode  as  a  piracy  of  the 
original  invention.  But  of  course  where  the  variations  adopted 
by  the  defendant  show  that  the  application  of  the  principle  is 
varied,  that  some  other  law  or  rule  of  science,  or  of  practice,  is 
made  to  take  the  place  of  that  which  the  patentee  claims  as  the 
essence  of  his  invention,  then  there  will  be  no  infringement,  but 
a  substantial  invention.^ 

*§,  234.  And  this  brings  us  to  the  consideration  of  another 
test  of  the  fact  of  infringement,  viz.,  that  which  shows  on  the 
l)art  of  the  defendant  a  substantive  invention  sufficient  to  sup- 
port a  patent,  as  for  a  new  thing. 

^  235.  There  may  be  many  different  modes  of  obtaining  the 
same  object,  and  consequently  if,  after  a  patent  has  been 
obtained  for  a  particular  thing,  another  party,  without  borrow- 
ing from  that  patent,  has  invented  a  new  mode  of  accomplish- 


would  be  the  machinery  or  apparatus  constructed  under  this  patent,  it  appears 
to  me  that  it  would  be  an  infringennent  of  it."     See,  also,  the  observations 
of  the  Lord  Justice  Clerk  Hope,  cited  ante. 
'  See  the  cases  cited,  Ante,  Part  I.,  Ch.  II. 


INFRINGEMENT.  277 

ing  the  same  object,  he  will  be  entitled  to  a  patent  for  his  dis- 
covery,^ The  fact  that  a  party  is  entitled  to  a  patent  for  a  sub- 
stantive invention,  becomes  a  test  of  his  infringement  of  a  prior 
patent,  in  this  way.  He  cannot  have  become  entitled  to  a 
patent  without  the  invention  of  something  material  and  new, 
that  goes  to  the  essence  and  substance  of  the  subject-matter. 
If  what  he  has  done  is  only  to  make  a  variation  in  certsun  par- 
ticulars, which  do  not  aftect  the  principle  of  the  invention,  the 
subject-matter  remains  the  same,  notwithstanding  such  variation. 
But  if  he  has  produced  a  new  subject-matter,  whether  it  be  in  the 
mode  of  accomplishing  a  common  object,  or  in  the  object  itself, 
he  has  not  infringed  upon  the  subject-matter  of  another  which 
was  materially  and  essentially  different. 

^  236.  The  application  of  this  test  is  seen  in  a  striking 
manner  in  the  facts  of  a  recent  English  case.  The  plaintiff 
had  obtained  a  patent  for  "  an  invention  of  improvements  in 
cards,  for  carding  wool,  cotton,  silk,  and  other  fibrous  substances, 
and  for  raising  the  pile  of  woollen  cloths."  In  his  specification, 
he  stated  his  invention  to  consist  in  "  the  application  and  adapta- 
tion of  caoutchouc  or  India  rubber  as  a  substitute  for  the  fillets 


>  Sir  N.  C.  Tindall,  C.  J.  in  Walton  v.  Potter,  Webs.  Pat.  Cas.  590, 
thus  states  the  general  principle,  "  Now  there  can  be  no  doubt  whatever 
that,  although  one  man  has  obtained  a  patent  for  a  given  object,  there  are 
many  modes  still  open  for  other  men  of  ingenuity  to  obtain  a  patent  for  the 
same  object ;  there  may  be  many  roads  leading  to  one  place,  and  if  a  man 
has,  by  dint  of  his  own  genius  and  discovery  after  a  patent  has  been  obtained, 
been  able  to  give  the  public,  without  reference  to  the  former  one,  or  borrow- 
ing from  the  former  one,  a  new  and  superior  mode  of  arriving  at  the  same 
end,  there  can  be  no  objection  to  his  taking  out  a  patent  for  that  purpose. 
But  he  has  no  right  whatever  to  take,  if  I  may  so  say,  a  leaf  out  of  his 
neighbor's  book,  for  he  must  be  contented  to  rest  upon  his  own  skill  and 
labor  for  the  discovery,  and  he  must  not  avail  himself  of  that  which  had 
before  been  granted  exclusively  to  another ;  and,  therefore,  the  question 
again  comes  round  to  this  —  whether  you  are  of  opinion  that  the  subject- 
matter  of  this  second  patent  is  perfectly  distinct  from  the  former,  or  whether 
it  is  virtually  bottomed  upon  the  former,  varying  only  in  certain  circum- 
stances, which  are  not  material  to  the  principle  and  substance  of  the  invention." 
24 


278  LAW    OF    PATENTS. 

or  sheets  of  leather  that  were  commonly  used  in  the  construc- 
tion of  ordinary  cards,  and  thus  giving  a  superior  elasticity  and 
durability  to  cards  ;  "  and  in  describing  the  mode  of  preparing 
the  article,  stated  that  "the  regularity  of  distance  and  uniform- 
ity of  the  dents  or  teeth  of  the  cards  were  found  to  be  better 
preserved  by  a  piece  of  linen  commonly  called  brown  holland, 
or  other  like  cloth,  well  glazed  and  cemented  on  to  the  back  of 
the  caoutchouc  or  India  rubber ;  "  that  the  cloth  so  placed  ren- 
dered the  action  of  the  dents  or  teeth  less  uncertain  in  their 
elastic  movements  ;  that  the  cloth  so  cemented  to  the  India  rub- 
ber or  caoutchouc  was  to  be  affixed  to  the  cylinder  or  board  of 
the  ordinary  carding  engine  by  nails,  but  if  it  was  to  be  affixed 
by  cementing,  (which  he  recommended  as  the  best  mode  of 
applying  the  cards,)  then  it  was  desirable  to  remove  the  cloth  ;  " 
and  he  then  proceeded  to  show  the  ordinary  mode  of  pricking 
or  piercing  holes  for  the  reception  of  the  dents  or  teeth,  the 
mode  of  cutting  the  India  rubber,  &c.  The  defendants  sub- 
sequently obtained  a  patent  also  for  "an  improvement  or 
improvements  in  cards  for  carding  various  fibrous  substances, 
part  of  which  improvements  may  be  used  as  a  substitute  for 
leather  ;  "  and  in  their  specification  they  stated  their  invention 
to  consist  in  the  manufacture  of  a  new  material  or  substance 
for  receiving  the  wire  teeth,  which  they  described  to  be  a  woven 
fabric  of  a  peculiar  construction,  soft  and  porous,  saturated  with 
a  solution  of  India  rubber  by  being  repeatedly  passed  through 
it,  and  then  dried  and  submitted  to  pressure ;  the  object 
being  to  render  the  fabric  so  dealt  with  "  extremely  elastic  in 
the  direction  of  the  thickness  of  the  fabric,  so  as  to  impart,  as 
it  were,  elasticity  to  the  wire  teeth  when  set." 

"§>  237.  The  question  as  to  the  infringement  was,  whether  the 
defendants  had  added  anything  material,  not  covered  by  the 
plaintiff''s  patent,  which  could  be  considered  as  constituting  a 
subject-matter  distinct  from  that  of  the  plaintiffs.  It  appeared 
that  the  difference  between  the  article  manufactured  under  the 
plaintiff^'s    patent,   and    that   under    the   defendant's    patent. 


INFRINGEMENT.  279 

which  was  complained  of  as  an  infringement,  was,  that  in  the 
former  the  caoutchouc  or  India  rubber  was  cemented  in  slices 
cut  from  the  solid  block  to  linen  cloth,  or  cloth  made  of  linen 
and  cotton,  in  the  manner  described  in  the  plaintiff's  specifica- 
tion, and  that  the  latter  consisted  of  cloth  of  a  peculiar  fabric 
saturated  or  impregnated  by  passing  it  through  a  liquid  com- 
posed of  caoutchouc  or  India  rubber  dissolved  in  naptha  or  oil 
of  turpentine  and  highly  rectified  coal  tar  oil,  and  afterwards 
drying  and  submitting  it  to  pressure.  The  plaintiff's  evidence 
tended  to  show  that  the  article  made  by  the  defendants  was  a 
colorable  imitation  of  that  made  under  the  plaintiff's  patent ; 
the  cloth  being  merely  placed  in  the  centre  between  two  strata 
of  India  rubber  or  caoutchouc,  instead  of  at  the  back,  and  the 
India  rubber,  though  applied  in  solution  or  in  the  form  of  a 
cement,  being  capable  of  being  reproduced  by  evaporation  of 
the  solvent,  and  the  principle  and  the  result  of  both  methods 
being  the  same,  viz.,  the  acquisition  of  an  increased  elasticity, 
though  the  modes  of  attaining  that  result  were  somewhat  dif- 
ferent. It  was  also  sworn,  that,  for  the  purpose  of  the  plain- 
tiff's patent,  caoutchouc  or  India  rubber  might  be  used  either 
in  the  state  in  which  it  is  imported,  or  in  a  manufactured  state, 
that  is,  dissolved  by  certain  known  solvents,  and  afterwards  by 
evaporation  of  the  solvents,  restored  to  solid  blocks  ;  but  that, 
if  free  from  air-holes,  (in  which  state  it  was  possible  to  obtain 
it,)  it  was  more  desirable  to  have  it  in  its  natural  state,  its  elas- 
ticity being  somewhat  diminished  by  the  artificial  process. 

<§>  238.  On  the  part  of  the  defendants,  several  witnesses,  as 
well  practical  as  scientific,  were  called,  who  stated  that  the 
principle  of  the  manufactures  respectively  described  in  the  spe- 
cifications of  the  plaintiff  and  defendants,  was  essentially  differ- 
ent, as  well  in  the  materials  used  and  the  mode  in  which  they 
were  put  together,  as  in  the  operation  or  result  of  their  combi- 
nation ;  the  one  process  being  wholly  mechanical,  the  other 
strictly  chemical,  and  the  effect  of  the  former  being  to  give 
elasticity,  and  of  the  latter  to  give  strength  and  flexibility  or 


280  LAW    OF    PATENTS. 

pJiancy,  but  imparting  only  a  very  sliglit  additional  elasticity 
to  the  card  ;  that  the  proportion  which  the  India  rubber  bore  to 
the  cloth  as  used  by  the  plaintiff,  was  generally  about  three  to 
one,  whereas  the  proportion  of  India  rubber  solution  used  by 
the  defendants  was  from  twenty  to  forty  per  cent,  only ;  and 
that  India  rubber  as  imported  was  wholly  unfit  for  the  purpose 
described  in  the  plaintiff's  specification,  never  being  sufficiently 
free  from  imperfection. 

<§>  239.  Upon  the  issue  of  not  guilty,  the  jury  found  a  verdict 
for  the  plaintiff,  thereby  establishing  that  the  defendant's  card 
was  an  infringement  of  the  plaintiff's,  both  employing  the  elas- 
ticity of  caoutchouc  next  the  teeth,  and  the  defendant's  prac- 
tising by  a  circuitous  mode  that  which  falls  within  the  claim  of 
the  plaintiff's  patent.^ 

'  Walton  V.  Potter,  Webs.  Pat.  Cas.  585,  597  ;  4  Scott's  N.  R.  91.  On 
the  application  for  a  new  trial,  Maule,  J.  said,  "  With  respect  to  the  issue 
of  not  guilty,  in  order  to  determine  whether  or  not  the  verdict  has  been  cor- 
rectly found  for  the  plaintiff  on  that  issue,  it  is  necessary  to  consider  what  is 
the  subject  of  the  defendant's  patent  ;  for  it  is  quite  clear  that  what  the 
defendants  have  done  they  claim  to  do  under  their  patent.  By  their  specifi- 
cation the  defendants  claim  to  be  the  inventors  of  a  new  material  for  forming 
the  backs  of  cards  ;  and  they  describe  the  mode  of  preparing  it  thus,  viz., 
'  by  repeatedly  passing  a  woven  fabric  of  a  peculiar  construction  through, 
and  saturating  it  with,  a  solution  of  caoutchouc  or  India  rubber,  and  then 
drying  it  in  order  to  evaporate  the  solvents,  and  leave  the  fabric  impregnated 
and  coated  with  caoutchouc  or  India  rubber,  and  afterwards  submitting  it  to 
pressure  ;  "  and  the  object  they  describe  as  being  to  render  the  fabric  so 
dealt  with,  '  extremely  elastic  in  the  direction  of  the  thickness  of  the  fabric, 
so  as  to  impart,  as  it  were,  elasticity  to  the  wire  teeth  when  set.'  That  is, 
in  effect,  producing  by  a  circuitous  process  a  cloth  with  a  layer  of  caoutchouc 
or  India  rubber  on  each  side  of  it,  so  as  to  give  a  great  degree  of  elasticity 
to  the  basis  of  the  dents  or  teeth  of  the  card.  The  plainfiff,  by  his  specifi- 
cation, claims  the  exclusive  right  of  making  cards  with  caoutchouc  or  India 
rubber,  as  the  fillet,  or  sheet,  or  medium  in  which  the  dents  or  teeth  are  to 
be  set  ;  the  object  being,  like  that  of  the  defendants,  the  attainment  of  a 
superior  degree  of  elasticity  and  durability  ;  and  in  describing  his  mode  of 
attainmg  that  object,  he  states  that  he  inserts  the  wire  dents  or  teeth  in  a 
foundation,  or  fillet  of  caoutchouc  or  India  rubber  — a  slice  of  India  rubber 


INFRINGEMENT. 


281 


■§>  240.  But,  if  the  defendants,  in  this  case,  could  have  suc- 
ceeded in  showing  that  the  materials  of  which  they  made  their 
cards,  and  the  mode  in  which  they  were  put  together  were  dif- 
ferent from  the  materials  and  method  of  construction  used  by 
the  plaintiff;  if  they  could  have  satisfied  the  jury  that  the 
difference  expressed  by  saying  that  the  one  process  was  mechan- 
ical and  the  other  chemical,  was  a  real  and  substantial,  and  not 
a  colorable  difference  ;  then  they  would,  notwithstanding  the 
former  patent  of  the  plaintiff,  and  notwithstanding  that  the 
objects  of  both  were  the  same,  have  appeared  to  be  the  authors 
of  a  substantive  invention,  because  they  would  have  produced 
a  distinct  subject-matter,  new  in  all  material  respects,  of  a  use- 
ful character,  and  therefore  capable  of  supporting  an  indepen- 
dent patent.  But  it  appeared  that  the  plaintiff's  patent  covered 
the  use  of  India  rubber  combined  with  cloth,  as  a  fillet  or  sheet, 
for  the  backs  of  cards,  in  which  to  insert  the  teeth,  in  order  to 
accomplish  certain  purposes  ;  and  that  the  mode  in  which  the 
defendants  brought  these  same  materials  into  combination,  for 
the  same  purposes,  was  only  a  circuitous  mode  of  doing  what 
the  plaintiff  had  done,  and  therefore  that  they  had  produced  noth- 
ing new,  material  to  the  principle  and  substance  of  the  invention. 

■§.241.     On  the  other  hand,  where  the  plaintiff  had  a  patent 


in  its  natural  state  —  and  that  with  a  view  to  preserve  the  regularity  of  dis- 
tance and  uniformity  of  the  dents  or  teeth,  and  to  render  their  action  less 
uncertain,  he  cements  to  the  back  of  the  caoutchouc  or  India  rubber  a  piece 
of  brown  holland  or  other  like  cloth.  The  plaintiff  does  not  confine  his 
claim  to  using  India  rubber  by  means  of  slicing  it  ;  he  claims  the  exclusive 
right  of  making  cards,  by  fixing  the  dents  or  teeth  in  India  rubber,  using  for 
that  purpose  cloth,  some  texture  of  linen  or  cotton.  In  some  instances  he 
says,  the  cloth  may  be  removed.  That  does  not,  in  point  of  fact,  make  it 
less  a  part  of  the  process,  by  which  he  applies  cloth,  for  the  putting  the  dents 
into  the  layer  of  India  rubber.  If  that  be  so,  I  think  it  is  evident  the 
defendants  claim  to  do  a  thing  falling  within  the  generality  of  the  plaintiff's 
claim.  Taking  that  to  be  so,  the  evidence  is  abundant  to  justify  the  jury  in 
finding  ;  and  it  seems  to  me  to  require  them  to  find  for  the  plaintiff."  See 
also  the  observations  of  Erskine,  J.  cited  ante. 
24* 


Og2  LAW    OF    PATENTS. 

for  producing  an  effect  in  the  manufacture  of  iron,  said  to  be 
altogether  new,  by  a  mode  or  process,  or  series  of  processes 
unknown  before,  it  being  for  a  combination  of  processes  alto- 
f^ether  new,  leading  to  one  end ;  and  the  defendants  had  used 
the  same  ingredients,  but  in  different  proportions,  which  consti- 
tuted a  mode  of  working  essentially  different  from  that  pointed 
out  in  the  specification,  it  was  held  that  there  was  no  infringe- 
ment. Tiie  plaintiff's  invention  in  this  case  consisted  in  ren- 
dering available  the  slags  or  cinders  produced  in  the  manufac- 
ture of  iron  ;  and  also  in  the  use  and  application  of  lime,  sub- 
sequent to  the  blast  furnace,  in  order  to  prevent  the  quality 
called  "  cold  short ; ''  and  his  specification  pointed  out  the  pro- 
portion of  slags,  mine  rubbish,  coke  and  limestone,  to  be  used 
for  the  production  of  the  effect.  To  prove  the  infringement,  a 
witness  in  the  employ  of  the  defendants  was  called,  who  stated 
that  he  had  seen  the  plaintiff's  specification  ;  that  since  the 
date  of  the  patent  the  defendants  preserved  cinders,  which  they 
had  not  done  before,  and  produced  pig-iron,  by  mixing  them 
with  mine  rubbish,  and  that  in  the  subsequent  processes  they 
applied  quick-lime  to  prevent  the  iron  from  being  "  cold  short." 
But  he  stated  that  the  defendants  did  not  work  by  the  plaintiff's 
specification,  but  used  very  different  proportions,  viz.  lime  in 
the  refinery  furnace  in  about  the  proportion  of  one  hundred  and 
twentieth  part  to  the  whole  charge  of  pig-iron,  and  that  they 
used  none  in  the  puddling  furnace,  and  that  the  defendants  had 
used  slags  in  the  puddling  furnace  for  years  before  the  date  of 
the  patent.  He  also  proved  that  the  proportions  of  mine  rub- 
bish, as  laid  down  in  the  specification,  were  not  essential  to  the 
success  of  the  process  ;  that  the  defendants  had  been  in  the 
habit  of  varying  those  proportions,  and  that  they  once  entirely 
omitted  mine  rubbish,  when  the  result  was  most  successful.' 

•§.  242.  Now,  this  patent  was  one  of  that  class  in  which  pro- 
portions or  degrees,  when  specified  as  the  mode  in  which  a  par- 


'  Hill  V.  Thompson,  Webs.  Pat.  Cas.  225,  233,  233. 


INFRINGEMENT.  283 

ticular  effect  is  to  be  produced,  make  a  part  of  the  essence  of 
the  invention.  A  discovery  may  consist  in  the  effect  produced 
by  the  union  of  certain  ingredients  or  agents  ;  but  if  a  particular 
proportion  is  supposed  to  be  necessary  to  the  effect,  and  is 
claimed  as  entering  into  the  production  of  that  effect,  the  sub- 
ject-matter of  the  patent  vi'ill  be  the  use  of  the  particular  ingre- 
dients in  that  particular  proportion  ;  and  if  the  same  ingredients 
in  different  proportions,  or  a  part  of  the  same  ingredients  in 
other  proportions,  are  used  by  another  person  to  produce  a  sim- 
ilar beneficial  effect,  more  or  less  advantageous,  that  person  will 
have  discovered  a  new  subject-matter,  and  consequently  will 
not  have  infringed  the  right  of  a  patentee,  whose  invention 
depends  on  the  proportions  which  he  has  specified.  Accord- 
ingly it  was  held  in  this  case  that,  the  defendant's  mode  of 
working  being  essentially  different  from  the  specificalion  of  the 
plaintiff,  they  had  not  infringed  his  patent ;  and  if  we  apply  to 
the  reasoning  of  the  court,  the  test  of  a  sufficiency  of  invention 
on  the  part  of  the  defendants  to  support  a  patent,  as  for  a  new 
discovery,  it  will  be  seen  that  the  same  facts  will  lead  to  that  re- 
sult, which  show  that  the  plaintiff's  patent  had  not  been  infringed.^ 

*  Dallas,  J.,  delivering  the  judgment  of  the  court,  said  :  "  To  prove  the 
infringement,  one  witness  only  was  called  ;  and  this  part  of  the  case  depends, 
therefore,  entirely  upon  his  testimony.  And,  before  adverting  to  the  evidence 
in  question,  it  will  be  necessary  to  look  to  the  patent,  as  far  as  it  relates  to  this 
part  of  the  subject.  It  has  not  been  contended  that  it  is  a  patent  introducing 
into  use  any  one  of  the  articles  mentioned,  singly  and  separately  taken  ;  nor 
could  it  be  so  contended,  for  the  patent  itself  shows  the  controversy  ;  and  if 
it  had  been  a  patent  of  such  a  description,  it  would  have  been  impossible  to 
support  it ;  for  slags  had  undoubtedly  been  made  use  of  previously  to  the 
patent,  so  had  mine  rubbish,  and  so  had  lime.  But,  it  is  said,  it  is  a  patent 
for  combinations  and  proportions,  producing  an  effect  altogether  new,  by  a 
mode  and  process,  or  series  of  processes,  unknown  before;  or,  to  adopt  the 
language  made  use  of  at  the  bar,  it  is  a  patent  for  a  combination  of  processes 
altogether  new,  leading  to  one  end  ;  and  this  being  the  nature  of  the  alleged 
discovery,  any  use  made  of  any  of  the  ingredients  singly,  or  any  use  made 
of  such  ingredients  in  partial  combination,  some  of  them  being  omitted,  or 
any  use  of  all  or  some  of  such  ingredients,  in  proportions  essentially  differ- 
ent from  those  specified,  and  yet  producing  a  result  equally  beneficial  (if  not 


284  I'AW     OF     PATENTS. 

<§)  243.   The  superior  utility  of  one   thing  over  another,  will 
sometimes  furnish  an  important  test  upon  this  question  of  iden- 

more  so,)  with  the  result  obtained  by  the  proportions  specified,  will  not  con- 
stitute an  infringement  of  the  patent. 

"  It  is  scarcely  necessary  here  to  observe,  that  a  slight  departure  from  the 
specification,  for  the  purpose  of  evasion  only,  would,  of  course,  be  a  fraud 
upon  the  patent,  and,  therefore,  the  question  will  be,  whether  the  mode  of 
working  by  the  defendant  has,  or  has  not,  been  essentially  or  substantially 
different.  For  this,  we  must  look  to  the  evidence  of  E.  Forman  ;  and  he 
being  the  single  witness  to  the  point,  by  his  testimony  this  part  of  the  case 
must  stand  or  fall.  It  may  be  difficult  entirely  to  reconcile  different  parts  of 
his  evidence  with  each  other,  if  his  answers  to  the  several  questions  be  taken 
separately  and  detached  ;  but  looking  to  the  result,  it  seems  to  be  clear. 
On  the  part  of  the  plaintiff  he  proves,  that,  before  the  patent  was  taken  out, 
the  defendants  were  not  in  the  habit  of  making  use  of  slags,  and  that  his 
attention  being  called  to  the  subject  by  the  patentee  in  the  first  instance,  and 
then  by  the  patent  itself,  he  has  made  use  of  them  uniformly  since  ;  he  has 
since  also,  at  times,  used  mine  rubbish,  and  also  lime,  which  last,  he  also 
admits,  was  used  to  prevent  the  '  cold  short,'  which  defect  he  allows  was 
and  is  thereby  prevented.  So  far,  therefore,  he  proves  separate  use  and 
occasional  combination.  He  is  next  asked,  as  to  the  proportions  mentioned 
in  the  patent :  '  Did  you  apply  the  lime  in  these  proportions  ?  '  — his  answer 
is  —  'I  say,  no,  to  that.'  *  Have  you  worked  by  the  specification  ? '  —  '  No, 
we  did  not.'  He  then  explains  in  what  respects  they  departed  from  the  spe- 
cification. This  is  his  evidence  on  the  examination -in-chief.  On  the  cross- 
examination,  he  says,  that  the  proportions  used  were  very  materially  differ- 
ent, and  that  the  proportions  in  the  patent  are  not  essential ;  that  it  would 
make  no  difference  to  him  if  he  were  to  be  restrained  from  using  these  pro- 
portions, and  that  the  result  would  be  better  obtained  by  materially  departing 
from  them  ;  indeed,  by  almost  losing  sight  of  them  altogether.  With  respect 
to  slags,  on  reconsideration,  he  states  that  the  defendant  had  used  slags  pre- 
viously to  the  patent,  in  the  puddling  furnace,  for  months  together.  As  to 
mine  rubbish,  he  says,  we  varied  the  proportions,  and  we  found,  in  experi- 
ence, that  the  use  of  it  was  best  without  reference  to  the  preparations  and 
restrictions  pointed  out  in  the  specification,  and  when  omitted,  the  result 
was  best  of  all.  It  is  true,  he  afterwards  states,  that  this  omission  took 
place  when  he  was  absent  from  home,  and  that,  on  his  return,  he  ordered 
the  mine  rubbish  to  be  restored  ;  and  in  this  respect,  and  going  to  this  single 
point,  there  appears  to  bean  inconsistency.  But  still,  as  the  case  stands  on 
his  single  evidence,  if,  in  substance  and  result,  it  proves  a  mode  of  working 
essentially  different  from  the  specification,  the  foundation  of  the  plaintiff's 
case  is  altogether  gone.     And  the  rule  is,  in  this  respect,  strict,  as  stated  by 


INFRINGEMENT.  285 

tity.  It  is  not  always  true  that  one  machine,  for  instance,  is  not 
an  infringement  upon  another,  because  it  is  better  than  the 
other ;  for  it  may  contain  the  whole  substance  of  that  other 
machine,  and  something  in  addition  which  makes  it  better  ;  or 
the  patent  may  have  been  taken  for  an  entire  machine,  substan- 
tially new  in  its  structure,  and  the  machine  complained  of  may 
contain  some  substantial  operating  part  of  the  machine  patented, 
and  so  infringe.  But  where  the  patent  is  for  some  one  opera- 
ting part  of  a  machine,  designed  to  effect  a  particular  end,  and 
the  machine  complained  of  effects  that  end  materially  better,  by 
the  use  of  means  which  are  in  point  of  fact  different,  then  the 
two  modes  of  operation  are  not  the  same  under  the  patent  law. 
In  other  words,  when  the  means  employed  are,  in  point  of  fact, 
not  the  same,  or  a  known  mechanical  equivalent,  and  the  ques- 


Mr.  Justice  Buller,  in  the  case  of  Turner  v.  Winter,  (Webs.  Pat.  Cas.  77.) 
In  that  case,  the  learned  judge  expressed  himself  in  these  words  :  'When- 
ever the  patentee  brings  an  action  on  his  patent,  if  the  novelty  or  effect  of 
the  invention  be  disputed,  he  must  show  in  what  his  invention  consists,  and 
that  he  procured  the  effect  proposed,  in  the  manner  specified  (Webs.  Pat. 
Cas.  81)  ;  '  and  in  another  part  of  the  same  case,  he  adds  :  '  Slight  defects 
in  the  specification  will  be  sufficient  to  vacate  the  patent  (Webs.  Pat.  Cas. 
82) ;  '  and  speaking  of  degree  and  proportion,  he  says  :  'The  specification 
should  have  shown  by  what  degree  of  heat  the  effect  was  to  be  produced.' 
In  that  case,  as  in  a  great  variety  of  others,  instances  may  be  found  to  show 
the  strictness  of  the  law,  as  bearing  upon  this  point,  either  in  regard  of 
omission,  or  of  superfluous  addition,  or  of  uncertainty  or  insufficiency  in 
quantities  proposed.  But,  further,  the  evidence  so  applied  does  not  confine 
itself  to  this  point  only  ;  for  it  disproves  also  utility,  as  far  as  it  depends  on 
combination  and  proportion,  leading  and  conducing  to  a  specific  result. 
Neither  can  it  be  justly  said,  that  the  use  of  the  separate  ingredients,  or 
some  of  them  partially  combined,  is  a  use  made  of  the  invention  in  part,  so 
as  to  support  the  counts  adapted  to  such  partial  use  ;  because,  as  it  has  been 
already  observed,  and  will  more  particularly  be  adverted  to  hereafter,  each 
of  the  ingredients  had  before  been  separately  used,  and  had  been  used,  more 
or  less,  in  partial  combination. 

"  On  the  whole,  our  opinion  is,  as  to  this  part  of  the  case,  that,  considering 
the  evidence  of  Forman,  in  its  substance  and  result,  and  with  reference  to 
the  peculiar  nature  of  the  patent,  an  infringement  of  the  patent  is  not  thereby 
proved."     Hill  v.  Thompson,  Webs.  Pat.  Cas.  244,  245,  246. 


286  LAW    OF    PATENTS. 

tion  to  be  determined  is,  whether  they  are,  under  the  patent 
law,  tlie  same  in  substance,  or,  as  it  is  usually  called,  the  same 
in  principle,  superior  utility  settles  that  question.  Two  things 
are  not  the  same  under  the  patent  law,  when  one  is  practically, 
substantially  better  than  the  other,  and  this  improvement  is  not 
gained  by  the  use  of  known  mechanical  equivalents. 

<§.  244.  This  view  of  the  patent  law  relieves  it  in  a  great 
degree  from  the  uncertainties  which  have  arisen  from  the  loose 
and  indeterminate  sense,  in  which  the  word  "  principle"  has  been 
employed  ;  and,  at  the  same  time,  it  is  in  exact  accordance  with 
the  great  purposes,  as  well  as  with  the  particular  provisions  of 
that  system  of  law.  Its  leading  purpose  was  to  encourage  use- 
ful inventions.  Practical  utility  was  its  object ;  and  it  would 
be  strange,  if,  with  such  object  in  view,  it  should  consider  two 
things  as  substantially  the  same,  which,  practically  and  in  refer- 
ence to  their  respective  utility,  are  substantially  different.  And 
although  this  test  has  not  seldom  been  lost  sight  of,  in  the  trial 
of  patent  causes,  yet  there  is  nowhere  any  authority  opposed  to 
it,  and  there  is  certainly  much  in  its  favor.^ 

» 
>  Thus,  in  Davis  v.  Palmer,  2  Brock.  310  ;  Mr.  Chief  Justice  Marshall 
states  the  principle  clearly.  He  was  commenting  on  the  clause  in  the  old 
patent  law,  that  "  simply  changing  the  form  or  the  proportion  of  any 
machine,  shall  not  be  deemed  a  discovery  ;  "  and  he  says,  "in  construing 
this  provision,  the  word  '  simply  '  has,  we  think,  great  influence  ;  it  is  not 
every  change  of  form  and  proportion,  which  is  declared  to  be  no  discovery, 
but  that  which  is  simply  a  change  of  form  and  proportion,  and  nothing  more. 
If  by  changing  the  form  and  proportion  a  new  effect  is  produced,  there  is  not 
simply  a  change  of  form  and  proportion,  but  a  change  of  principle  also.''''  To 
the  same  effect  are  the  following  cases  :  Earle  v.  Sawyer,  4  Mas.  1,  where 
the  substitution  of  a  circular  saw,  in  place  of  a  reciprocating  saw,  in  a  shin- 
gle machine,  was  held  to  be  a  patentable  improvement.  —  Davol  v.  Brown, 
1  Woodb.  &  M.  53,  where  the  arrangement  of  bowed  flyers,  in  a  fly-frame, 
in  two  rows,  was  held  to  be  patentable,  although  open-bottomed  flyers  had 
previously  been  arranged  in  two  rows,  and  geered  in  the  same  way,  and 
bowed-flyers  had  been  arranged  in  the  one  row  with  like  geering.  —  Russell 
V.  Cowley,  Webs.  Pat.  Cas.  464,  where  it  was  held,  that  tubes  having  been 
welded  by  grooved  rollers  on  a  maundrill,  it  was  a  patentable  improvement 
to  weld  them  by  grooved  rollers  without  a  maundrill ;  and  Lord  Lyndhurst 


INFRINGEMENT.  287 

<§>  245.  Every  patent  stands  upon  its  subject-matter,  and 
accordingly  the  question  of  infringement  depends  upon  the  use 
of  that  which  is  covered  by  the  patent.  A  patent  may  be  for  a 
new  combination,  whether  the  particular  parts  or  things  consti- 
tuting that  combination  be  new  or  old.  But  where  the  patent 
is  for  a  combination,  and  not  for  several  and  distinct  improve- 
ments, it  is  no  infringement  to  use  any  of  the  parts  or  things 
which  go  to  make  up  the  combination,  if  the  combination  itself 
be  not  used.^ 

>§>  246.  But  on  the  other  hand,  where  the  patent  is  for  several 
distinct  improvements  or  things,  and  does  not  stand  upon  the 
combination  of  such  things,  then  the  use  of  any  one  of  them 
will  be  an  infringement.^  But  in  order  to  succeed  in  an  action 
for  the  infringement  of  any  one  of  such  improvements,  it  was 
formerly  necessary  with  us,  as  in  England,  that  the  whole  of  the 
improvements  claimed  as  such  should  be  new ;  and  if  the 
novelty  of  any  one  of  them  failed,  though  it  might  not  be  the 
one  used  by  the  defendant,  the  action  could  not  be  sustained. 


puts  the  case  of  welding  them  by  fixed  dies  instead  oi  rollers.  See  also 
Kneass  v.  Schuylkill  Bank,  4  Wash.  9  ;  Crane  v.  Price,  Webs.  Pat.  Cas. 
409;  Webster  on  the  Subject-matter,  &c.  26,  n.  t.  30;  1  Webs.  Pat. 
Cas.  95. 

In  these  cases  the  principle  is  necessarily  involved,  and  in  some  of  them 
distinctly  announced,  that  any  change  in  the  instruments  employed,  by  which 
a  new  result  is  produced,  or  an  old  result  produced  in  a  more  economical  and 
beneficial  manner,  is  the  subject  of  a  patent.  It  is  an  invention  of  a  weio 
thing,  under  the  patent  law.  The  same  test  is  proposed  by  Mr.  Webs- 
ter, in  his  very  able  dissertation  on  the  Subject-matter  of  Patents,  page 
27.  He  says,  in  substance,  that  the  question  is,  whether  the  change  be 
colorable  and  formal,  or  substantial  and  essential ;  that  is,  whether  it  be 
such  as  would  of  itself  support  a  patent.  The  jury  must  find  whether 
what  is  new  is  essential,  or  useless,  and  a  colorable  evasion  ;  whether,  by 
reason  of  the  change,  the  thing  has  acquired  ji  new  and  distinct  character. 

'  Barrett  v.  Hall,  1  Mas.  447.  See  the  observations  of  Mr.  Justice 
Story,  cited  from  this  case,  ante,  p.  82 ;  Evans  v.  Eaton,  1  Peters, 
C.  C.  R.  343. 

*  Moody  ^;.  Fisk,  2Mas.  115. 


288  *     LAW     OF     PATENTS. 

The  reason  for  this  was,  not  that  the  right  of  the  patentee  would 
not  have  been  infringed,  if  he  had  had  a  vahd  patent,  but  that 
his  patent  was  void,  on  account  of  a  partial  failure  of  the  whole 
consideration  on  which  it  was  granted ;  the  consideration  on 
whicii  a  patent  was  granted  being  the  novelty  of  all  the  things 
represented  to  be  new,  regarded  as  an  entirety ;  and  the  con- 
sideration being  entire,  if  it  failed  in  part,  it  failed  as  to  the 
whole.  The  government  was,  in  such  a  case,  deceived  in  its 
grant ;  the  whole  patent  was  therefore  inoperative,  and  no 
action  could  be  maintained  upon  it.^ 


'  In  Moody  i'.  Fisk,  2  Mas.  112,  115,  Mr.  Justice  Story  hinted  at  this 
doctrine,  when  he  said  that,  "  In  such  a  case,  the  patent  goes  for  the  whole 
of  the  improvements,  and  if  each  be  new  and  be  claimed  distinctly  in  the  patent, 
there  does  not  seem  to  be  any  good  reason  why  the  party  who  pirates  any 
part  of  the  invention  should  not  be  liable  in  damages."  The  subsequent 
cases  in  England,  of  Hill  v.  Thompson,  8  Taunt.  382  ;  2  B.  Moore,  433  ; 
Webs.  Pat.  Cas.  239;  Brunton  v.  Hawkes,  4  B.  &  Aid.  541  ;  and  Morgan 
II.  Seaward,  2  M.  &  W.  544  ;  Webs.  187;  have  fully  established  this  doc- 
trine. In  the  last  of  these  cases,  Mr.  Baron  Parke,  delivering  the  judgment 
of  the  court,  said,  "This  brings  me  to  the  question  whether  this  patent, 
which  suggests  that  certain  inventions  are  improvements,  is  avoided  if  there 
be  one  which  is  not  so  ;  and  upon  the  authorities  we  feel  obliged  to  hold  that 
the  patent  is  void,  upon  the  ground  of  fraud  on  the  crown,  without  entering 
into  the  question  whether  the  utility  of  each  and  every  part  of  the  invention 
is  essential  to  a  patent,  where  such  utility  is  not  suggested  in  the  patent 
itself  as  the  ground  of  the  grant.  That  a  false  suggestion  of  the  grantee 
avoids  an  ordinary  grant  of  lands  and  tenements  from  the  crown,  is  a  maxim 
of  the  common  law,  and  such  a  grant  is  void,  not  against  the  crown  merely, 
but  in  a  suit  against  a  third  person.  It  is  on  the  same  principle  that  a 
patent  for  two  or  more  inventions,  when  one  is  not  new,  is  void  altogether, 
as  was  held  in  Hill  v.  Thompson,  2  Moore,  424,  8  Taunt.  375,  and  Brun- 
ton V.  Hawkes,  4  B.  &  Aid.  542  ;  for,  although  the  statute  invalidates  a 
patent  for  want  of  novelty,  and  consequently,  by  force  of  the  statute  the 
patent  would  be  void  so  far  as  related  to  that  which  was  old,  yet  the  princi- 
ple on  which  the  patent  has  been  held  to  be  void  altogether  is,  that  the  con- 
sideration for  the  grant  is  the  novelty  of  all,  and  the  consideration  failing, 
or,  in  other  words,  the  crown  being  deceived  in  its  grant,  the  patent  is  void, 
and  no  action  maintainable  upon  it.  We  cannot  help  seeing,  on  the  face  of 
this  patent,  as  set  out  in  the  record,  that  an  improvement  in  steam  engines 


INFRINGEMENT. 


289 


^^  247.  The  statute  of  July  4,  1836,  <§.  15,  recognizes  this 
doctrine,  by  estabhshing  as  a  defence  that  the  patentee  was  not 
the  first  inventor  of  the  thing  patented,  "  or  of  a  substantial 
and  material  part  thereof  claimed  as  new."  But  a  more  recent 
statute  has  provided  that  the  patent  shall  be  deemed  good  and 
valid  for  so  much  of  the  invention  or  discovery  as  shall  be  truly 
and  bond  fide  the  invention  or  discovery  of  the  patentee,  if  it 
is  a  material  and  substantial  part  of  the  thing  patented,  and  is 
definitely  distinguishable  from  the  other  parts  which  the  patentee 
had  no  right  to  claim,  notwithstanding  the  specification  may  be 
too  broad,  if  it  was  so  made  by  mistake,  accident  or  inadver- 
tence, and  without  any  wilful  default  or  intent  to  defraud  or 
mislead  the  public."  ^  This  leaves  the  former  doctrine,  by  which 
a  failure  of  novelty  in  any  part  vitiated  the  whole  patent,  still 
applicable  to  cases  where  the  claim  was  made  too  broad,  wilfully 
and  knowingly,  or  with  intent  to  defraud  or  deceive  the  public. 

<§,  24§.  The  eflfect  of  a  failure,  in  point  of  utility  of  one  or 
more  of  several  parts  or  things  claimed  as  distinct  inventions,  is 
held  in  England  to  be  the,  same  as  a  failure  in  point  of  nov- 
elty. If  any  thing  claimed  as  essential  turn  out  to  be  useless, 
the  patent  is  voidable,  provided  it  was  known  to  the  patentee, 
at  the  time  of  enrolling  his  specification,  to  be  useless, 
because  he  misleads  the  public  by  representing  it  to  be  useful ; 


is  suggested  by  the  patentee,  and  is  part  of  the  consideration  for  the  grant ; 
and  we  must  reluctantly  hold  that  the  patent  is  void,  for  the  falsity  of 
that  suggestion.  In  the  case  of  Lewis  v.  Marling,  (10  B.  &  C.  22  ;  5  M. 
&  Ry.  66,)  this  view  of  the  case,  that  the  patent  was  void  for  a  false  sug- 
gestion, does  not  appear  by  the  report  to  have  been  pressed  on  the  attention 
of  the  court,  or  been  cjnsidered  by  it.  The  decision  went  upon  the  ground 
that  the  brush  was  not  an  essential  part  of  the  machine,  and  that  want  of 
utility  did  not  vitiate  the  patent  ;  and,  besides,  the  improvement  by  the  intro- 
duction of  the  brush  is  not  recited  in  the  patent  itself  as  one  of  the  subjects 
of  it,  which  may  make  a  difference.  We  are,  therefore,  of  opinion,  that 
the  defendants  are  entitled  to  our  judgment  on  the  third  issue."  See,  also, 
the  elaborate  judgments  in  Brunton  v.  Hawkes. 
'  Act  of  1837,  ^9. 
25 


290  LAW    OF    PATENTS. 

but  if  it  was  subsequently  discovered  not  to  be  useful,  material, 
or  necessary,  it  forms  no  ground  of  objection  to  the  patent.^ 
A  patent  for  an  entire  machine  or  other  subject  which  is,  taken 
altogether,  useful,  though  a  part  or  parts  may  be  useless,  will 
be  valid,  provided  there  is  no  false  suggestion.^  So,  too,  a  find- 
ing of  the  jury,  thai  the  invention  is  useful  on  the  whole,  but 
fails  or  is  not  useful  in  some  cases,  is  not  a  ground  of  nonsuit.^ 

>  Lewis  V.  Marling,  10  B.  &  C.  22  ;  4  Car.  &  P.  57 ;  Webs.  Pat. 
Cas.  493. 

*  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  197. 

'  Haworth  v.  Hardcastle,  Webs.  Pat.  Cas.  480,  483.  In  this  case,  Sir 
N.  C.  Tindal,  C.  J.  said,  "  The  motion  for  entering  a  nonsuit  was  grounded 
on  two  points  ;  first,  that  the  jury  had,  by  their  special  finding,  negatived 
the  usefulness  of  the  invention  to  the  full  extent  of  what  the  patent  and  spe- 
cification had  held  out  to  the  public  ;  secondly,  that  the  patentee  had  claimed 
in  his  specification  the  invention  of  the  rails  or  staves  over  which  the  cloths 
were  hung,  or,  at  all  events,  the  placing  them  in  a  tier  at  the  upper  part  of 
the  drying  room.  As  to  the  finding  of  the  jury,  it  was  in  these  words  : 
"  The  jury  find  the  invention  is  new  and  useful  upon  the  whole ;  and  that  the 
specification  is  sufiicient  for  a  mechanic,  properly  instructed,  to  make  a 
machine,  and  that  there  has  been  an  infringement  of  the  patent;  but  they 
also  find  that  the  machine  is  not  useful  in  some  cases  for  taking  off  goods. 
The  specification  must  be  admitted,  as  it  appears  to  us,  to  describe  the  inven- 
tion to  be  adapted  to  perform  the  operation  of  removing  the  calicoes  and 
other  cloths  from  off  the  rails  or  staves  after  they  have  been  sufiiciently 
dried.  But  we  think  we  are  not  warranted  in  drawing  so  strict  a  conclusion 
from  this  finding  of  the  jury  as  to  hold  that  they  have  intended  to  negative, 
or  that  they  have  thereby  negatived,  that  the  machine  was  useful  in  the  gen- 
erality of  the  cases  which  occur  for  that  purpose.  After  staling  that  the 
machine  was  useful  on  the  whole,  the  expression  that  '  in  some  cases  it  is 
not  useful  to  take  up  the  cloths,'  appears  to  us  to  lead  rather  to  the  inference 
that  in  the  generality  of  cases  it  is  found  useful.  And  if  the  jury  think  it 
useful  in  the  general,  because  some  cases  occur  in  which  it  does  not  answer, 
we  think  it  would  be  much  too  strong  a  conclusion  to  hold  the  patent  void. 
How  many  cases  occur,  what  proportion  they  bear  to  those  in  which  the 
machine  is  useful,  whether  the  instances  in  which  it  is  found  not  to  ansvper 
are  to  be  referred  to  the  species  of  cloth  hung  out,  to  the  mode  of  dressing 
the  cloths,  to  the  thickness  of  them,  or  to  any  other  cause  distinct  and  dif- 
ferent from  the  defective  structure  or  want  of  power  in  the  machine,  this 
finding  of  the  jury  gives  us  no  information  whatever.  Upon  such  a  finding, 
therefore,  in  a  case  where  the  jury  have  given  their  general  verdict  for  the 


INFRINGEMENT.  291 

But  these  cases  are  entirely  distinguished  from  those  where  the 
purpose  wholly  fails,  and  the  invention  described  does  not 
accomplish  the  effect  that  is  claimed  for  it.  On  a  patent 
of  this  description,  of  course  no  action  whatever  can  be 
maintained.^ 

<§>  249.  The  principles  of  our  law  would  apparently  lead  to 
the  same  conclusions  upon  this  subject  ;  for  although  it  is  not 
material,  whether  the  subject-matter  of  a  patent  is  more  or  less 
useful,  it  must  possess  some  utility  ;  and  if  the  subject-matter 
consists  of  several  things,  all  included  in  one  patent,  but  claimed 
as  the  distinct  inventions  of  the  patentee,  a  failure  of  any 
one  of  them,  in  point  of  utility,  must  vitiate  the  patent,  if  it  was 
represented  to  be  useful,  when  it  was  known  not  to  be  so,  for 
the  same  reasons  which  are  applicable  in  England.  Our  stat- 
ute, moreover,  has  expressly  provided,  as  one  of  the  defences  to 
an  action  on  a  patent,  "  that  it  contains  more  than  is  necessary 
to  produce  the  described  effect,"  when  such  addition  "  shall 
fully  appear  to  have  been  made  for  the  purpose  of  deceiving  the 
public ; "  that  is  to  say,  when  it  appears  that  the  patentee  was 
aware  that  he  was  introducing  something  not  useful,  material,  or 
necessary,  at  the  time  of  preparing  his  specification.^ 

<§.  250.  The  rule  of  damages  for  the  infringement  of  a  patent  is 

plaintiff,  we  think  that  we  should  act  with  great  hazard  and  precipitation,  if 
we  were  to  hold  that  the  plaintiff  ought  to  be  nonsuited  upon  the  ground 
that  his  machine  was  altogether  useless  for  one  of  the  purposes  described  in 
his  specification." 

'  Mantoa  v.  Parker,  Dav.  Pat.  Cas.  327.  This  was  a  patent  for  "  a 
hammer  on  an  improved  construction,  for  the  locks  of  all  kinds  of  fowling- 
pieces  and  small  arms  ;  "  and  a  material  part  of  the  invention  consisted  in  a 
means  of  letting  out  the  air  from  the  barrel  and  causing  a  communication 
between  the  powder  in  the  pan  and  in  the  barrel,  without,  at  the  same  time, 
letting  out  the  powder.  The  witnesses  for  the  defendant  having  proved 
that  the  powder  passed  through  the  same  hole  as  the  air,  the  plaintiff  was 
noasuited. 

*  Act  of  July  4,  1836,  ^  15. 


292  LAW    OF    PATENTS. 

provided  by  statute  in  the  following  terms  ;  "  that,  whenever  in 
any  action  for  damages  for  using  or  selling  the  thing  whereof 
the  exclusive  right  is  secured  by  any  patent  heretofore  granted, 
or  which  shall  hereafter  be  granted,  a  verdict  shall  be  rendered 
for  the  plaintiff  in  such  action,  it  shall  be  in  the  power  of  the 
court  to  render  judgment  for  any  sum  above  the  amount  found 
by  such  verdict  as  the  actual  damages  sustained  by  the  plaintiff, 
not  exceeding  three  times  the  amount  thereof,  according  to  the 
circumstances  of  the  case."  ^  By  the  terms  "  actual  damages, 
sustained  by  the  plaintiff,"  are  meant  such  damages  as  he 
can  actually  prove,  and  has  in  fact  sustained,  as  contra-dis- 
tinguished from  mere  imaginary  or  vindictive  damages,  which 
are  sometimes  given  in  personal  torts.^  These  damages  will  be 
trebled  by  the  court,  according  to  the  statute.^ 

<§»  251.  In  estimating  the  "actual  damage,"  the  rule  is,  in 
cases  of  infringement  by  an  actual  use  of  the  plaintiff's  inverf- 
tion  —  as  by  making  and  using  a  patented  machine  —  to  give 
the  value  of  such  use  during  the  time  of  the  illegal  user,  that  is 
to  say,  the  amount  of  profits  actually  received  by  the  defendant.'* 
To  this,  it  seems  there  should  also  be  added  all  the  losses  to 
which  the  plaintiff  has  been  subjected  by  the  piracy.^ 


'  Act  of  July  4,  1836,  §  14. 

*  Whittemore  v.  Cutter,  1  Gallis.  429.  It  seems,  however,  that  if  the 
defendant  is  sued  a  second  time  for  an  infringement,  exemplary  damages 
may  be  given.     Alden  v.  Dewey,  1  Story's  R.  336,  339. 

'  Lowell  u,  Lewis,  1  Mas.  184,  185;  Gray  v.  James,  Peters's  C.  C.  R. 
394. 

*  Lowell  V.  Lewis,  1  Mas.  184,  185 ;  Whittemore  v.  Cutter,  1  Gallis. 
429. 

*  In  Earle  v.  Sawyer,  4  Mas.  1,  12,  Mr.  Justice  Story  said  :  "  But  I  wish 
to  say  a  few  words  in  relation  to  the  point  of  law,  which  the  objection  sug- 
gests, and  which  is  founded  upon  the  decision  of  this  court,  in  the  case  of 
Whittemore  v.  Cutter,  (1  Gallis.  R.  479.)  To  that  decision,  as  founded  in 
just  principle,  I  still  adhere,  although,  I  confess,  with  subdued  confidence, 
since,  I  have  reason  to  believe,  that  it  has  not  met  the  entire  concurrence  of 
other  and  abler  judicial  minds.     It  has  been  maintained,  hy  some  learned 


INFRINGEMENT.  293 

<§.  252.  But  where  merely  the  making  of  a  patented  machine 

persons,  that  the  price  of  the  invented  machine  is  a  proper  measure  of  dam- 
ages, in  cases  where  there  has  been  a  piracy  by  making  and  using  the 
machine,  because,  in  such  cases,  the  verdict  for  the  plaintiff  entitles  the 
defendant  to  use  the  machine  subsequently,  and,  in  short,  transfers  the  right 
to  him  in  the  fullest  manner,  and,  in  the  same  way,  that  a  recovery  in  trover 
or  trespass,  for  a  machine,  by  operation  of  law,  transfers  the  right  to  such 
machine  to  the  trespasser,  for  he  has  paid  for  it.     If  I  thought  such  was  the 
legal  operation  of  a  verdict  for  the  plaintiff,  in  an  action  for  making  and 
using  a  machine,  no  objection  could  very  forcibly  occur  to  my  mind  against 
the  rule.     But  my  difficulty  lies  here.     The  patent  act  gives  to  the  inventor 
the  exclusive  right  of  making  and  using  his  invention  during  the  period  of 
fourteen  years.     But  this  construction  of  the  law  enables  any  person  to 
acquire  that  right,  by  a  forced  sale,  against  the  patentee,  and  compels  him 
to  sell,  as  to  persons  or  places,  when  it  may  interfere  essentially  with  his 
permanent  interest,  and  involve  him  in  the  breach  of  prior  contracts.     Thus, 
the  right  would  not  remain  exclusive  ;  but  the  very  attempt  to  enforce  it 
would  involve  the  patentee  in  the  necessity  of  patting  with  it.     The  rule 
jtself,  too,  has  no  merit  from  its  universality  of  application.     How  could  it 
apply,  when  the  patentee  had  never  sold  the  right  to  any  one?     How,  when 
the  value  of  the  right  depended  upon  the  circumstance  of  the  right  being 
confined  to  a  few  persons?    Where  would  be  the  justice  of  its  application,  if 
the  invention  were  of  enormous  value  and  profit,  if  confined  to  one  or  two 
persons,  and  of  very  small  value  if  used  by  the  public  at  large,  for  the  result 
of  the  principle  would  be,  that  all  the  public  might  purchase  and  use  it  by  a 
forced  judicial  sale.     On  the  other  hand,  cases  may  eccur,  where  the  wrong 
done  to  the  patentee  may  very  far  exceed  the  price,  which  he  would  be  wil- 
ling to  take  for  a  limited  use  by  a  limited  number  of  persons.    These,  among 
others,  are  difficulties  which  press  on  my  mind  against  the  adoption  of  the 
rule ;  and  where  the  declaration  goes  for  a  user  during  a  limited  period,  and 
afterwards  the  party  sues  for  a  user  during  another  and  subsequent  period. 
I  am  unable  to  perceive,  how  a  verdict  and  judgment  in  the  former  case  is  a 
legal  bar  to  a  recovery  in  the  second  action.     The  piracy  is  not  the   same, 
nor  is  the  gravamen  the  same.    If,  indeed,  the  plaintiff,  at  the  trial,  consents 
that  the  defendant  shall  have  the  full  benefit  of  the  machine  forever,  upon 
the  ground  of  receiving  the  full  price  in  damages,  and  the  defendant  is  con- 
tent with  this  arrangement,  there  may  be  no  solid  objection  to  it  in  such  a 
case.     But  I  do  not  yet  perceive  how  the  court  can  force  the  defendant  to 
purchase,  any  more  than  the  plaintiff  to  sell,  the  patent  right,  for  the  whole 
period  it  has  to  run.     The  defendant  may  be  an  innocent  violator  of  the 
plaintiff's  right ;  or  he  may  have  ceased  to  use,  or  to  have  employment  for 
such  a  machine.     There  are  other  objections  alluded  to  in  the  case  in  1  Gal- 
lis.  R.  434. 

25* 


294  LAW     OF     PATENTS. 

is  proved,  as  no  actual  damages  have  been  sustained,  nominal 
damages  only  should  be  given. ^ 

<§>  253.  Where  patented  articles  (cast-iron  water  wheels)  were 
manufactured  by  the  defendants  on  an  order  given  by  a  third 
person,  and  the  order  was  partially  executed  before  the  defend- 
ants had  notice  of  the  patent,  and  two  wheels  only  were  cast 


Struck  with  similar  difficulties,  in  establishing  any  general  rule  to  govern 
cases  upon  patents,  some  learned  judges  have  refused  to  lay  down  any  par- 
ticular rule  of  damages,  and  have  left  the  jury  at  large  to  estimate  the  actual 
damages,  according  to  the  circumstances  of  each  particular  case.  I  rather 
incline  to  believe  this  to  be  the  true  course.  There  is  a  great  difference 
between  laying  down  a  special  and  limited  rule,  as  a  true  measure  of  dama- 
ges, and  leaving  the  subject  entirely  open,  upon  the  proofs  in  the  cause,  for 
the  consideration  of  the  jury.  The  price  of  the  machine,  the  nature,  actual 
state  and  extent  of  the  use  of  the  plaintiff's  invention,  and  the  particular 
losses,  to  which  he  may  have  been  subjected  by  the  piracy,  are  all  proper 
ingredients  to  be  weighed  by  the  jury  in  estimating  the  damages,  valere 
quantum  valcant." 

See  also  the  observations  of  Lord  Justice  Clerk  Hope,  in  the  Househill 
Company  v.  Neiison,  cited  Webs.  Pat.  Cas.  697,  note.  In  Pierson  v.  The 
Eagle  Screw  Company,  3  Story's  R.  410,  Mr.  Justice  Story  again  said  : 
"  But,  upon  the  question  of  damages,  I  wo\ild,  upon  this  occasion,  state, 
(what  I  have  often  ruled  before,)  that  if  the  plaintiff  has  established  the 
validity  of  his  patent,  and  that  the  defendants  have  violated  it,  he  is  entitled 
to  such  reasonable  damages  as  shall  vindicate  his  right,  and  reimburse  him 
for  all  such  expenditures  as  have  been  necessarily  incurred  by  him  beyond 
what  the  taxable  costs  will  repay,  in  order  to  establish  that  right.  It  might 
otherwise  happen,  that  he  would  go  out  of  court  with  a  verdict  in  his  favor, 
and  yet  have  received  no  compensation  for  the  loss  and  wrong  sustained  by 
him.  Indeed,  he  might  be  ruined  by  a  succession  of  suits,  in  each  of  which 
he  might,  notwithstanding,  be  the  successful  party,  so  far  as  the  verdict  and 
judgment  should  go.  My  understanding  of  the  law  is,  that  the  jury  are  at 
liberty,  in  the  exercise  of  a  sound  discretion,  if  they  see  fit,  (I  do  not  say 
that  they  are  positively  and  absolutely  bound  under  all  circumstances)  to  give 
the  plaintiff  such  damages,  not  in  their  nature  vindictive,  as  shall  compensate 
the  plaintiff  fully  for  all  his  actual  losses  and  injuries  occasioned  by  the  vio- 
lation of  the  patent  by  the  defendants." 
'  Whiltemore  v.  Cutter,  ut  supra. 


INFRINGEMENT.  295 

after   notice,   it   was   held   that   nominal  damages  only  were 
proper.^ 

<§>  254.  It  was  formerly  doubted,  whether  the  jury  were  at 
liberty  to  allow,  as  part  of  the  actual  damage,  the  counsel  fees 
and  expenses  of  witnesses  beyond  the  taxable  costs,  incurred  by 
the  plaintiff  in  vindicating  his  right.  But  it  is  now  the  estab- 
lished rule  and  practice  to  allow  them.^ 

<§)  255.  As  to  the  time  of  the  acts  complained  of  as  amount- 
ing to  an  infringement,  it  is  obvious  that  the  patent  cannot  be 
infringed  by  any  thing  done  when  the  patent  did  not  exist ;  and 
therefore  it  is  no  infringement  to  make  or  use  a  machine  subse- 
quently patented,  or  otherwise  to  practise  the  invention  which 
is  afterwards  made  the  subject  of  a  patent,  before  the  patent  is 
obtained.  But  when  a  patent  is  granted,  the  right  in  the  sub- 
ject-matter relates  back  to  the  time  of  the  invention,  so  that  the 
party  who  has  practised  the  invention  between  the  time  of  the 
discovery  and  the  issuing  of  the  patent,  must  cease  to  do  so. 
Any  acts  of  infringement  done  after  the  issuing  of  the  patent 
will  be  ground  for  the  recovery  of  damages,  although  the  pre- 
vious acts  were  done  at  a  time  when  it  was  uncertain  whether 
there  would  be  any  patent  issued.^  The  same  is  true  of  acts 
done  in  violation  of  a  patent  which  is  surrendered  and  renewed 
on  account  of  defects  in  the  specification.  If  a  party  erect  and 
put  in  use  a  patented  machine  during  the  existence  of  a  defec- 


'  Bryce  v.  Dorr,  3  McLean,  582. 

^  Boston  Manuf.  Co.  v.  Fiske,  2  Mason,  119,  120.  In  England,  damages 
at  law  are  generally  only  nominal.  Lewis  v.  Marling,  Webs.  Pat.  Cas. 
493,  n.  The  plaintiff  is  not  entitled  to  damages  in  a  second  action  as  of 
right.  Minter  v.  Mower,  Ibid.  138.  Damages  should  consist  of  profits  and 
compensation  for  the  infraction  of  the  right.  The  Househill  Company  v. 
Neilson,  Ibid.  697.  Semble,  that  acts  done  in  reliance  on  a  former  verdict 
against  a  patent  are  evidence  in  reduction  pf  damages.  Arkwrightw.  Night- 
ingale, Ibid.  61. 

^  Evans  v.  Weiss,  2  Wash.  342  j  Dixon  v.  Meyer,  4  Wash.  68. 


296  LAW     OF    PATENTS. 

tive  patent  which  is  afterwards  surrendered,  it  will  be  an 
infringement  of  the  new  and  renewed  patent,  if  he  continues 
the  use  of  such  machine  after  the  renewal ;  and  it  seems  that 
no  notice  of  the  renewal  is  necessary  ;  and  if  it  is,  that  khow- 
ledge  of  the  original  patent  will  be  notice  of  the  renewed 
patent  granted  in  continuation  of  it,  according  to  the  provisions 
and  principles  of  law.^ 

<§,  256.  A  patentee  may  recover  damages  for  an  infringement 
during  the  time  which  intervened  between  the  destruction  of  the 
patent  office  by  fire,  in  1836,  and  the  restoration  of  the  records 
under  the  act  of  March  3,  1837.2 

>  Ames  V.  Howard,  1  Sumner,  482,  488.  In  this  case  Mr.  Justice  Story 
said,  "  The  next  objection  is,  that  in  point  of  law  the  plaintiff  is  not  entitled, 
without,  some  previous  notice  or  claim,  to  maintain  this  action  under  his 
patent  against  the  defendants,  for  continuing  the  use  of  the  machines  erected 
and  put  in  use  by  them  before  the  patent  issued.  This  objection  cannot  pre- 
vail. I  am  by  no  means  prepared  to  say,  that  any  notice  is,  in  cases  of  this 
sort,  ever  necessary  to  any  party,  who  is  actually  using  a  machine  in  viola- 
tion of  the  patent  right.  But  it  is  very  clear,  that  in  this  case  enough  was 
established  in  evidence  to  show,  that  the  defendants  had  the  most  ample 
knowledge  of  the  original  patent  taken  out  by  the  plaintiff  in  1822,  and  of 
which  the  present  is  only  a  continuation,  being  grounded  upon  a  surrender  of 
the  first  for  mere  defects  in  the  original  specification.  Whoever  erects  or 
uses  a  patented  machine,  does  it  at  his  peril.  He  takes  upon  himself  all  the 
chances  of  its  being  originally  valid  ;  or  of  its  being  afterwards  made  so  by 
a  surrender  of  it,  and  the  grant  of  a  new  patent,  which  may  cure  any  defects, 
and  is  grantable  according  to  the  principles  of  law.  That  this  new  patent 
was  so  grantable  is  clear,  as  well  from  the  decision  of  the  supreme  court  in 
Grant  v.  Raymond,  (6  Peters  R.  218,)  as  from  the  Act  of  Congress  of  the  3d 
of  July,  1833,  ch.  162.  There  is  no  pretence  to  say,  that  the  defendants 
were  bond  fide  purchasers  without  any  knowledge  or  notice  of  any  adverse 
claim  of  the  plaintiff  under  this  original  patent;  and  the  damages  were  by 
the  court  expressly  limited  to  damages  which  accrued  to  the  plaintiff  by  the 
use  of  the  machine  after  the  new  patent  was  granted  to  the  plaintiff." 
*  Hogg  V.  Emerson,  6  How.  437. 


INFRINGEMENT.  297 

Note.    The  following  discussion  is  extracted  from  Mr.  Webster's  short 
Treatise  on  the  Subject-M alter  of  Patents. 

The  Principle  of  an  Invention. 

The  use  of  the  term  "  principle,"  in  reference  to  the  subject-matter  of 
letters  patent,  has  given  rise  to  so  much  discussion,  that  some  remarks  upon 
it  may  not  form  an  improper  conclusion  to  this  part  of  the  subject.  It  is 
said,  most  truly,  that  there  cannot  be  a  patent  for  a  principle  ;  that  a  princi- 
ple must  be  embodied  and  applied  so  as  to  afford  some  result  of  practical 
utility  in  the  arts  and  manufactures  of  the  country,  and  that  under  such  cir- 
cumstances a  principle  may  be  the  subject  of  a  patent.'  In  a  certain  sense, 
indeed,  a  principle  so  embodied  and  applied  may  be  considered  as  the  subject 
of  a  patent,  but  it  is  that  embodiment  and  application  which  is  in  reality  the 
subject-m.atter  of  the  patent.  The  principle  so  embodied  and  applied,  and 
the  principle  of  such  embodiment  and  application,  that  is  to  say,  the  princi- 
ple of  the  invention,  are  essentially  distinct ;  the  former  being  a  truth  of 
exact  science,  or  a  law  of  natural  science,  or  a  rule  of  practice  ;  the  latter, 
the  practice  founded  upon  such  truth,  law,  or  rule.  The  want  of  a  due 
appreciation  of  this  distinction  was  the  foundation  of  much  of  the  discussion 
which  occurred  in  the  proceedings  on  Watt's  patent,  but  the  distinction  was 
fully  recognised  and  adopted  by  Mr.  Justice  Buller,  in  the  following 
passage  :  * 

"  There  is  one  short  observation  arising  on  this  part  of  the  case,  which 
seems  to  me  to  be  unanswerable,  and  that  is,  that  if  the  principle  alone  be 
the  foundation  of  the  patent,  it  cannot  possibly  stand,  with  that  knowledge 
and  discovery  which  the  world  were  in  possession  of  before.  The  effect, 
the  power,  and  the  operation  of  steam  were  known  long  before  the  date  of 


1  The  fair  mode  of  looking  at  a  patent  and  the  specification  is  to  inquire  what  is  the 
spirit  of  the  invention,  or  the  principle,  and  this  must  he  embodied  in  some  mode  or 
method,  because  it  is  admitted  on  all  hands  you  cannot  take  out  a  patent  for  a  princi- 
ple. But  although  the  law  says  undoubtedly,  and  correctly  enough,  that  you  cannot 
take  out  a  patent  for  a  principle,  that  is,  for  a  barren  principle,  when  you  have  clothed 
it  with  a  form,  and  given  it  body  and  substance,  in  which  the  principle  may  live  and 
produce  the  benefit  which  vou  claim  to  result  from  it,  why,  then,  in  many  cases,  (and 
it  is  a  consolation  to  every  just  and  honest  feeling  one  has  on  the  subject  of  mven- 
tion,)  although  you  cannot  have  a  patent  for  a  principle  in  substance,  you  can  have  a 
patent  for  the  spirit  of  your  invention,  for  if  any  other  person  comes  and  clothes  the  spirit 
of  your  invention  with  a  difibrent  body,  and  puts  that  principle  in  use  in  any  other  shape 
or  fashion,  it  is  always  a  question  for  a  jury,  whether,  however  diflerent  in  appearance, 
in  shape,  in  form,  in  method  -  whether  the  article  or  the  practice,  if  it  be  matter  con- 
nected with  the  arts  and  manufactures,  be  or  be  not  substantially  an  adaptation  of  the 
principle,  applied  with  the  same  view  to  answer  the  same  end,  and  merely  imitated 
in  substance  whatever  diflerence  there  may  be  in  point  of  form.  See  per  Sir  F. 
Pollock,  Pat.  Rep.  145.  See  also  in  proceedings  on  Neilson's  patent,  Ibid.  342. 
2  2  H.  Bl.  485,  486.    See  also  Webs,  on  Pat.  2  n.  d. 


5^8  LAW    OF    PATENTS. 

this  patent  ;  all  machines  which  are  worked  by  steam  are  worked  by  the 
same  principle.  The  principle  was  known  before,  and  therefore,  if  the  prin- 
ciple alone  be  the  foundation  of  the  patent,  though  the  addition  may  be  a 
great  improvement,  (as  it  certainly  is,)  yet  the  patent  must  be  void  ah  initio. 
But  then  it  was  said,  that  though  an  idea  or  principle  alone  would  not  sup- 
port the  patent,  yet  that  an  idea  reduced  into  practice,  or  a  practical  applica- 
tion of  a  principle,  was  a  good  foundation  for  a  principle,  was  a  good  found- 
ation of  a  patent,  and  was  the  present  case.  The  mere  application  or  mode 
of  using  a  thing  was  admitted  in  the  reply  not  to  be  a  sufficient  ground  ;  for 
on  the  court  putting  the  question,  whether,  if  a  man,  by  science,  were  to 
devise  the  means  of  making  a  double  use  of  a  thing  known  before,  he  could 
have  a  patent  for  that,  it  was  rightly  and  candidly  admitted  that  he  could 
not,'  The  method  and  the  mode  of  doing  a  thing  are  the  same,  and  I  think 
it  impossible  to  support  a  patent  for  a  method  only,  without  having  carried 
it  into  effect,  and  produced  some  new  substance." 

"  But  here  it  is  necessary  to  inquire,  what  is  meant  by  a  principle  reduced 
into  practice.  It  can  only  mean  a  practice  founded  on  principle,  and  that 
practice  is  the  thing  done  or  made,  or  in  other  words,  the  manufacture  which 
is  invented."  The  assertion,  then,  that  there  cannot  be  a  patent  for  a  prin- 
ciple, amounts,  in  effect,  to  nothing  more  than  an  assertion  that  a  truth  of 
exact,  or  a  law  of  natural  science,  or  a  rule  of  practice,  is  not  any  manner 
of  manufacture;  the  discovery  and  enunciation  of  such  truth,  law,  or  rule, 
may  be  a  valuable  addition  to  our  knowledge,  but  it  cannot  be  described  as 
the  working  or  making  of  some  manner  of  new  manufacture,  which  working 
or  making  is  the  only  discovery  and  invention  which  by  law  can  be  the  sub- 
ject-matter of  letters-patent. 

The  term  "  principle"  admitting  of  the  above-mentioned  varieties  of  con- 
struction and  interpretation,  according  to  the  circumstances  under  which  it 
is  used,  it  becomes  important  to  advert  to  certain  other  distinctions  existing 
in  the  nature  of  the  principles  which  are  to  be  embodied  and  applied,  so  as 
to  constitute  invention,  which  may  be  the  subject  of  letters  patent.  Those 
principles  which  may  be  defined  and  classified  as  truths  of  exact  science,  or 
laws  of  natural  science,  are  in  their  nature  essentially  distinct  from  those 
which  may  be  defined  as  rules  of  practice  ;  the  former  having,  so  to  speak, 
an  independent  and  original  existence,'  the  latter  being  derived  and  originating 
altogether  with  man,  and  as  such  of  necessity  partaking  in  some  degree  of 
the  character  of  invention.  Further,  the  truths  of  exact  or  mathematical 
science  differ  from  the  laws  of  natural  science  in  this :  that  the  former  are 
founded  on  definition,  the  latter  on  observation  and  experiment ;  and  both 

'  As  to  the  cases  of  new  application,  which  may  be  properly  described  as  a  double 
use,  and  which  cannot  be  the  subject-matter  of  letters  patent,  see  Pat.  Rep.  208,  n.  f. 

2  See  the  observations  of  Mr.  Baron  Alderson  on  the  subject,  Pat.  Repi  342, 
and  post. 


INFRINGEMENT.  299 

differ  from  the  class  of  principles  which  have  been  described  as  rules  of 
practice. 

The  instrument  known  by  the  name  of  Hadley's  quadrant  or  sextant,  fur- 
nishes a  good  illustration  of  the  embodying  and  application  of  a  truth  of  exact 
science,  and  of  a  law  of  natural  science,  namely,  of  certain  propositions  of 
geometry  for  the  measurement  of  angles,  and  of  the  laws  of  light  when  inci- 
dent on,  and  reflected  by,  plane  surfaces  inclined  to  each  other.  The  princi- 
ple of  this  invention  was  the  arranging  and  combining  inclined  reflecting  sur- 
faces, and  certain  radii  and  arcs  of  a  circle,  so  as  to  give  effect  to  such  truths 
and  laws  for  the  measurement  of  the  angular  distance  of  objects  ;  the  prin- 
ciple then  of  this  invention  is  a  rule  whereby  those  truths  of  exact  science 
and  laws  of  natural  science  become  embodied.'  In  the  same  manner,  Dol- 
lond's  invention*  of  the  achromatic  object-glass,  was  founded  on  certain 
truths  of  exact  science,  respecting  curved  surfaces  and  the  laws  of  light, 
when  refracted  by  those  surfaces  ;  the  combining  of  a  convex  lens  of  crown 
glass,  and  a  concave  lens  of  flint  glass,  of  proper  curvatures,  was  the  rule  of 
practice  by  which  these  object-glasses  were  made. 

The  principle  of  Clegg's  invention  of  a  gas-meter  partakes,  to  a  certain 
extent,  both  of  a  law  of  natural  science  and  of  a  rule  of  practice.  The  laws 
of  natural  science,  respecting  the  motion  of  a  solid  immersed  in  a  fluid,  are 
applied  in  conjunction  with  certain  rules  of  practice  for  the  admission  and 
emission  of  gas,  and  the  opening  and  closing  of  certain  orifices  for  that  pur- 
pose, and  the  result  was  an  apparatus  for  measuring  the  quantity  of  gas 
supplied.^ 

The  oscillation  of  the  pendulum  takes  place  according  to  the  laws  of  fall- 
ing bodies,  and  the  vibration  of  the  balance,  according  to  the  laws  of  elasti- 
city of  bodies  ;  these  principles  are  embodied  in  our  ordinary  clocks  and 
watches.  The  laws  of  latent  heat,  of  the  rapid  evaporation  of  liquids  in 
vacuo,  of  the  union  of  certain  substances,  chemically,  in  definite  proportions, 
and  of  electricity,  have  given  rise  to  a  great  variety  of  useful  inventions,  in 
which  these  laws  respectively  are  embodied.  Such  truths,  laws,  or  princi- 
ples, having  an  existence  anterior  to,  and  independent  of,  the  operations  of 
man,  cannot  of  themselves  be  the  subject  of  letters-patent;  but  when  they 
have  been  embodied  or  applied  in  practice  to  a  particular  purpose,  then  the 
invention  to  which  they  give  rise  is  properly  described,  as  founded  on  those 
laws,  and  the  principle  of  the  invention  is  the  practice  whereby  those  laws 
are  enabled  to  produce  useful  effects.     Thus,  the   inventions  of  Watt  were 


'  The  beautiful  toy,  called  the  Kaleidoscope,  depends,  in  like  manner,  on  the  laws  of 
the  reflection  of  light,  incident  on,  and  reflected  by  two  planed  mirrors,  inclined  at  a 
small  angle  to  each  other;  the  objects  and  the  eye  being  situated  between  the  mirrors, 
in  such  a  position  that  each  object  gave  a  number  of  images  on  the  circumference  of  a 
circle. 

^  See  specification  of  this  invention,  Pat.  Rep.  43. 

*  See  specification  and  description  of  the  invention,  Pat.  Rep.  103,  and  post. 


300  LAW     OF     PATENTS. 

applications  of  the  laws  of  the  elasticity  and  of  the  latent  heat  of  steam  ;  and 
a  great  variety  of  other  instances  might  be  adduced  in  which  well-known 
principles  '  are,  so  to  speak,  embodied  and  clothed,  or  connected  with  a 
material  form,  for  some  particular  and  specified  purpose,  in  the  arts  and 
manufactures,  and  so  as  to  be  in  a  condition  to  act  and  to  produce  effects. 

Such  being  the  import  of  the  term  principle,  as  applied  to  inventions 
founded  on  the  truths  of  exact  science,  and  laws  of  natural  science,  it 
remains  to  consider  the  use  of  that  term,  with  reference  to  those  cases  where 
no  truth  of  exact  science,  or  law  of  natural  science  is  embodied,  but  where 
the  arrangements  and  rules  of  practice  are  not  referable  immediately,  if  at 
at  all,  to  such  truths  or  laws,  but  to  certain  rules  of  practice.  The  cases 
placed  in  the  first  and  third  classes,  will  illustrate  inventions  founded  simply 
on  a  rule  of  practice,  in  contradistinction  to  inventions  founded  on  a  truth  of 
exact,  or  a  law  of  natural  science.  Thus  the  principle  of  Arkwright's 
invention  was  the  use  and  arrangement  of  certain  known  things,  in  a  partic- 
ular manner,  for  spinning  cotton. '•'  The  principle  of  Huddart's  invention, 
was  the  compressing  the  yarns,  and  drawing  them  through  a  tube.^  The 
principle  of  Jupe's'*  for  an  expanding  table,  was  the  cutting  the  table  across, 
and  making  the  parts  to  diverge  from  the  centre,  and  withdrawing  the  sec- 
lions,  and  filling  up  the  openings,  by  leaves  or  suitable  pieces.  The  princi- 
ple of  Galloway's  improvements  in  machinery,  for  propelling  vessels,^  was 
the  arrangements  of  parts,  for  giving  different  positions  to  the  float-boards, 
during  the  revolution  of  the  paddle-wheel;  and  the  principle  of  the  inven- 
tion under  his  second  patent,®  was  the  arrangement  of  float-boards,  in  a  fixed 

'  It  is  of  considerable  importance,  thai  the  meaning  of  the  term  principle,  when 
applied  in  the  strictest  sense,  should  be  distinctly  understood.  For  this  pu.^pose,  it 
may  be  well  to  add  a  few  illustrations  of  the  truths  of  exact  science,  and  of  the  laws  of 
physical  or  natural  science.  All  propositions  founded  on  definitions,  and  to  which,  by 
reason  of  their  being  so  founded,  the  term  "  demonstration  "  is  applicable,  are  truths  of 
exact  science  ;  as  the  well-known  propositions  of  geometry,  that  in  a  right-angled  tri- 
angle, the  square  of  the  hypolhenuse  is  equal  to  the  sum  of  the  squares  of  the  opposite 
sides  ;  that  the  angle  of  the  centre  of  a  circle,  is  double  the  angle  at  the  circumference  ; 
or  that  similar  triangles  are  to  each  other  in  the  duplicate  ratio  of  their  homologous 
sides.  The  truths  or  laws  of  natural  science  differ  from  the  preceding  in  this,  that 
they  are  not  founded  on  definition,  or  capable  of  demonstration  in  the  strict  sense  of 
the  term  —  they  are  rules  derived  from  observation,  and  describing  what  will  take 
place  under  particular  circumstances.  Thus  we  speak  of  the  laws  of  falling  bodies, 
that  is,  the  rules  respecting  their  motions  ;  of  the  laws  of  the  atmosphere,  of  light,  of 
electricity,  all  which  are  merely  rules  derived  from  observation;  we  learn  by  experi- 
ence that  such  phenomena,  under  certain  circumstances,  will  present  themselves,  and 
one  state  of  things  being  supposed,  we  are  able  to  anticipate  and  predict  the  following. 

2  See  Pat.  Rep.  56. 

3  Ibid.  85. 
*  Ibid.  143. 

5  See  in  Morgan  v.  Seaward,  Pat.  Rep. 

«  See  in  Galloway  v.  Bleaden,  15  Rep.  Arts,  N.  S.  and  Pat.  Rep. 


INFRINGEMENT.  301 

position,  according  to  an  assigned  law  or  rule.  In  all  such  cases,  the  princi- 
ple of  the  invention  is  the  particular  arrangement,  combination,  composition, 
or  application,  according  to  the  rule  of  operation  and  construction,  by  which 
the  working  or  making  of  the  manufacture,  the  subject  of  the  letters-patent, 
is  to  be  carried  out  in  practice.  The  cases  placed  under  the  third  class  serve 
to  illustrate  those  inventions,  the  principle  of  which  may  be  said  to  be 
founded  simply  on  a  rule  of  practice,  and  not  on  any  truth  of  exact,  or  law 
of  natural  science.  In  many  of  the  cases  under  the  third  class,  the  princi- 
ple of  the  invention  is  the  application  or  adaptation  of  some  known  property 
or  quality  of  a  substance  ;  as  in  Forsyth's  patent,'  where  the  principle  of  the 
invention  was  the  application  of  detonating  powder  in  discharging  artillery; 
and  in  Hall's,  the  application  of  the  flame  of  gas  to  singing  lace.*  Thus, 
in  every  class  of  cases,  the  dictum  of  BuUer,  J.,'  that  a  principle  reduced  to 
practice,  and  a  practice  founded  on  principle,  are  really  the  same  thing,  is 
fully  supported.'' 

An  important  practical  question  arises,  with  reference  to  many  of  the' cases 
which  have  been  placed  under  the  second  and  third  class,*  as  to  the  extent  to 
which  the  inventor  can  appropriate  to  himself  the  application  of  the  truth  of 
exact  science,  or  the  law  of  natural  science,  or  the  rule  of  practice  constitu- 
ting the  peculiar  feature  of  his  invention.  In  respect  of  the  truths  of  exact 
science,  or  laws  of  natural  science,  independent  of  their  application,  no 
invention  which  is  the  subject  of  letters-patent,  or  special  property,  so  to 
speak,  can  exist.  The  question  then  arises,  to  what  extent  may  such  truth 
or  law,  by  reason  of  its  application,  be  appropriated,  and  the  answer  is,  to 
the  extent  of  all  other  applications  which  a  jury  shall  consider  as  a  piracy  of 
the  former.  It  is  impossible  to  lay  down  any  general  rules  on  this  point ; 
the  subject  does  not  admit  of  being  so  dealt  with,  and  it  should  always  be 
borne  in  mind,  with  reference  to  the  law  of  patents,  that  each  case  must  be 
judged  of  by  its  peculiar  circumstances.  The  following  observations  by  Mr. 
Baron  Alderson,  in  the  recent  proceedings  in  Neilson's  patent,^  are  deserv- 
ing of  peculiar  attention,  and  exhibit  in  a  clear  manner  the  difficulties  of  the 
case  :  —  "I  take  the  distinction  between  a  patent  for  a  principle,  and  a  patent 
which  can  be  supported,  is,  that  you  must  have  an  embodiment  of  the  prin- 


'  Pat.  Rep.  97. 

8  Ibid. 

3  Ante. 

■•  If  any  further  observations  were  necessary  in  support  of  the  preceding,  it  might  be 
remarked  that  the  phrases  "  the  principle  of  my  invention  consists  in,"  or  "my  inven- 
tion consists  in,"  naturally  suggest  themselves  in  many  cases  indifferently,  as  synony- 
mous expressions,  in  describing  an  invention,  thus  showing  that,  substantially  and 
practically,  there  is  no  difference  in  these  phrases. 

*  Webs  on  Pat.  11,  13. 

®  Se?  report  of  this  case,  Pat.  Rep.  342. 

26 


302  LAW     OF     PATENTS. 

ciple,  in  some  practical  mode,  described  in  the  specification,  of  carrying  the 
principle  into  actual  effect,  and  then  you  take  out  your  patent,  not  for  the 
principle,  but  for  the  mode  of  carrying  the  principle  into  effect.  In  Watt's 
patent,  which  comes  the  nearest  to  the  present  of  any  you  can  suggest,  the 
real  invention  of  Watt  was,  that  he  discovered  that,  by  condensing  steam  in 
a  separate  vessel,  a  great  saving  of  fuel  would  be  effected,  by  keeping  the 
steam  cylinder  as  hot  as  possible,  and  applying  the  cooling  process  to  the 
separate  vessel,  and  keeping  it  as  cool  as  possible,  whereas  before,  the  steam 
was  condensed  in  the  same  vessel ;  but  then  Mr.  Watt  carried  that  practi- 
cally into  effect,  by  describing  a  mode  which  would  effect  the  object.  The 
difficulty  which  presses  on  my  mind  here,  is,  that  this  party  has  taken  out  a 
patent,  in  substance  like  Wait's,  for  a  principle  — that  is,  the  application  of 
hot  air  to  furnaces  —  but  he  has  not  practically  described  any  mode  of  carry- 
ing it  into  effect.  If  he  had,  perhaps  he  might  have  covered  all  other  modes 
as  being  a  variation.  It  is  very  difficult  to  see  what  is  a  patent  for  a  princi- 
ple, and  for  a  principle  embodied  in  a  machine,  because  a  patent  can  only  be 
for  a  principle  embodied  in  a  machine.  You  cannot  take  out  a  patent  for  a 
principle.  I  have  always  thought  that  the  real  test  was  this  :  that,  in  order 
to  discover  whether  it  is  a  good  or  a  bad  patent,  you  should  consider  that 
what  you  cannot  take  out  a  patent  for,  must  be  considered  to  have  been 
invented  fro  bono  publico,  that  is  to  say,  the  principle  must  be  considered  as 
having  had  an  anterior  existence  before  the  patent.'  Now  supposing,  in 
Watt's  case,  it  had  been  known  that,  to  condense  in  a  separate  vessel,  was  a 
mode  of  saving  fuel,  then  Watt  certainly  would  have  taken  out  a  patent  for 
carrying  into  effect  that  principle  by  a  particular  machine  ;  but  then  his 
patent  would  have  been  for  a  machine  ;  and  if  I  invented  a  better  machine  for 
carrying  out  the  principle,  I  do  not  infringe  his  patent,  unless  my  machine  is 
a  colorable  imitation.  But  you  must  embody  the  principle  in  the  machine, 
and  you  stop  all  possible  improvements,  because  you  infringe  the  principle, 
which  you  have  no  right  to  do  ;  it  is  the  principle  of  the  machine.  It  is 
very  difficult  for  a  jury  to  distinguish  that,  but  it  is  the  most  essential  thing 
possible.  Now  here,  supposing  it  had  been  known  that  hot  air  applied  to  a 
furnace  was  a  great  improvement  on  cold  air,  and  that  this  person  had  taken 
out  his  patent,  and  this  patent  was  a  patent  for  the  application  of  a  well- 
known  thing  —  the  hot  air  to  furnaces  —  then  he  takes  out  a  patent  for 
applying  it,  by  means  of  an  intermediate  reservoir  between  the  blast-furnace 
and  the  bellows  ;  then  surely  anybody  else  may  apply  the  same  principle, 
provided  he  does  not  do  it  by  a  reservoir  intermediately  between  the  blast- 

1  The  following  observation  of  the  same  learned  judge  is  important,  with  reference  to 
this  question  :  —  "  You  see  you  do  not  interfere  with  any  benefit  which  the  inventor 
has,  if  he  knows  of  no  particular  mode  of  carrying  his  principle  into  effect.  You  do 
not  interfere  with  any  benefit  which  he  ever  had,  if  he  never  had  a  practical  mode  of 
carrying  it  into  efiect."    Printed  Case,  4to.  p.  19S. 


INFRINGEMENT.  303 

furnace  and  the  bellows  —  and  the  question  for  a  jury  is,  whether  or  not  a 
long  spiral  pipe  is  a  reservoir  —  if  it  be  not  a  reservoir,  or  a  colorable  imita- 
tion of  a  reservoir,  it  is  no  infringement." 

The  same  learned  judge,  in  another  case,  the  proceedings  on  Jupe's  patent,^ 
remarked,  with  reference  to  Clegg's  gas  meter,''  as  follows :  "  There  never 
was  a  more  instructive  case  than  that.  1  remember  very  well  the  argument 
put  by  the  lord  chief  baron,  who  led  that  case  for  the  plaintiff,  and  succeeded. 
There  never  were  two  things  to  the  eye  more  different  than  the  plaintiff's 
invention,  and  what  the  defendant  had  done  in  contravention  of  his  patent 
right.  The  plaintiff's  invention  was  different  in  form — different  in  con- 
struction ;  it  agreed  with  it  only  in  one  thing  —  and  that  was  by  moving  in 
the  water  a  certain  point  was  made  to  open,  either  before  or  after,  so  as  to 
shut  up  another,  and  the  gas  was  made  to  pass  through  this  opening  — 
passing  through  it,  it  was  made  to  revolve  it.  The  scientific  men,  all  of 
them,  said,  the  moment  a  practical  scientific  man  has  got  that  principle  in 
his  head,  he  can  multiply  without  end  the  forms  in  which  that  principle  can 
be  made  to  operate.  The  difficulty  which  will  press  on  you,  and  to  which 
your  attention  will  be  called  in  the  present  case,  is  this  ;  you  cannot  take  out 
a  patent  for  a  principle — ^you  may  take  out  a  patent  for  a  principle,  coupled 
with  the  mode  of  carrying  the  principle  into  effect,  provided  you  have  not 
only  discovered  the  principle,  but  invented  some  mode  of  carrying  it  into 
effect.  But  then  you  must  start  with  having  invented  some  mode  of  carrying 
the  principle  into  effect ;  if  you  have  done  that,  then  you  are  entitled  to  pro- 
tect yourself  from  all  other  modes  of  carrying  the  same  principle  into  effect, 
that  being  treated  by  the  jury  as  piracy  of  your  original  invention.  But  then 
the  difficulty  which  will  press  on  you  here  is,  that  on  the  evidence  there  does 
not  appear  to  have  been  any  mode  of  carrying  the  principle  into  effect  at  all 
invented  by  you." 

The  attention  of  this  learned  judge  having  been  called,  in  the  recent  proceed- 
ings on  Neilson's  patent,  to  his  former  remark,  his  lordship  observed  that 
he  should  more  correctly  have  said  "  that  you  take  out  a  patent  for  a  mode 
of  carrying  a  principle  into  effect."  But  the  peculiar  circumstances  of  Jupe's 
patent  do  not  seem  to  require  any  such  qualification,  nor  was  any  such  made 
in  speaking  of  the  analogous  case  of  Clegg's  invention.  The  occasion 
appears  fully  to  explain  the  introduction  to  that  qualification.  In  the  pro- 
ceedings on  Neilson's  patent,  the  learned  judge  was  speaking  of  those  phi- 
losophical principles  which  are  the  common  property  of  all ;  in  the  proceed- 
ings on  Jupe's  patent,  he  was  speaking  of  the  principle  of  the  particular 
invention,  which  was  the  cutting  a  table  into  four  segments  or  sections,  and 
causing  them  to  diverge,  and  filling  up  the  intermediate  spaces  so  as  to  consti- 


J  Jupe  V.  Pratt,  Pat.  Rep.  146. 
«  Pat.  Rep.  103. 


304  LAW    OF    PATENTS. 

tute  an  expanding  table,  and  which  in  its  very  terms  implies  that  which  is  the 
subject  of  a  patent.' 

Questions  of  this  nature  are  difficult  to  deal  with  in  the  abstract,  but  the 
same  difficulty  does  not  present  itself  in  the  practical  form  in  which  the 
question  generally  arises,  namely,  in  a  contest  between  two  inventors  in  an 
action  for  an  infringement.  In  such  cases  the  question  is,  whether  a  mode 
subsequently  invented  and  adopted  is  a  substantial  and  independent  inven- 
tion, or  only  a  colorable  variation,  and  borrowed  from  the  previous  inven- 
tion. In  the  determination  of  this  question,  the  character  of  the  original 
invention,  the  merit  to  be  attributed  to  its  author,  the  means  by  which  the 
principle  is  carried  out,  the  object  of  its  application,  and  the  end  attained, 
the  success  and  utility  of  the  prior  invention,  and  the  comparative  merits  of 
the  two  inventions,  are  all  elements  for  the  consideration  of  the  jury.  The 
well-known  truths  of  exact  science,  and  the  laws  of  natural  science,  and  the 
properties  and  qualities  of  matter  are  the  common  property  of  all ;  the  appli- 
cations or  adaptations  of  such  to  the  various  wants  of  man,  constitute  inven- 
tions which  are  the  subject  of  letters-patent.  But  there  are  general  truths, 
laws,  properties,  and  qualities,  not  yet  discovered  ;  the  person  who  discovers 
any  such,  and  also  applies  and  adapts  them,  is  an  author  of  a  much  higher 
order  and  more  distinguished  merit  than  he  who  applies  and  adapts  what  is 
already  known.  The  property,  however,  which  such  a  one  can  in  law 
acquire  by  reason  of  such  discovery  and  application,  does  not  differ  in  extent 
from  that  of  the  preceding  class.  But  in  deciding  the  practical  question  of 
infringement  by  a  subsequent  invention,  a  very  different  estimation  is  neces- 
sarily made  of  the  two  ;  he  who  applies  and  adapts  knowledge  before  in  the 
common  stock,  is  prima  facie  entitled  to  less  consideration  than  he  who 
brings  into  the  common  stock  the  knowledge  which  he  applies.^  In  such 
cases,  however,  it  is  essential  that  the  principle  should  be  given  to  the  world, 
and  also  further,  that  the  means  should  be  fully  described,  and  that  the 
means,  as  described,  should  be  sufficient  for  the  purpose.  It  not  unfre- 
quently  happens  that  the  principle  is  kept  back,  and  certain  arrangements, 
only  without  any  general  rule,  are  given  to  the  world  ;  if  this  be  from  igno-  ■ 
ranee,  the  invention  is  merely  a  fortunate  accident,  and  the  merit  is  compara- 
tively small,  and  little  advantage  is  conferred  on  the  public;  if  from  design, 
then,  though  the  merit  may  be  great,  the  inventor  does  not  comply  with 
what  the  law  requires,  and  moreover  fails  to  secure  his  invention  to  the 
extent  which  he  otherwise  might. 


'  See  Webs,  on  Pat.  17.  It  was  a  question  in  this  case,  whether  the  specification 
claimed  any  thing  in  respect  of  the  means  by  which  the  divergence  was  to  be  effected; 
that  is,  any  thing  beyond  the  mere  cutting  the  table  into  four  sections,  which  should  be 
made  to  diverge,  and  filled  up  as  above  described  in  the  text.    See  Pat.  Rep.  56. 

2  This  consideration,  however,  is  again  controlled  by  the  benefit  vsrhich  may  have 
been  conferred  on  the  public  ;  that  is,  by  the  utility  of  the  invention. 


INFRINGEMENT. 


305 


The  discovery  of  truths  of  exact  science,  or  of  laws  of  natural  science, 
is  an  event  of  rare  occurrence,  and  within  the  opportunities  and  powers  of 
few  ;  but  fresh  applications  of  such  truths  and  laws  are  of  constant  occur- 
rence, and  exercise  the  powers  of  a  large  class  of  individuals.' 

But  the  principal  source  of  inventions  consists  in  the  application  of  the 
known  qualities  of  known  substances.  With  respect  to  many  of  these  the 
question  arises,  to  what  extent  is  the  use  or  application  of  those  substances 
appropriated  by  the  inventor.  This  question  was  raised  in  the  recent  pro- 
ceedings on  Walton's  patent"  for  improvements  in  cards.  It  had  occurred  to 
Mr.  Walton  that  the  bed  in  which  the  teeth  are  set  requires  a  certain  degree 
of  elasticity  and  flexibility,  so  as  to  allow  of  the  teeth  yielding  to  any  obsta- 
cle with  which  they  meet  in  the  operation  of  carding.  This  idea  having 
suggested  itself,  the  giving  that  elasticity  and  flexibility  to  the  backs  of  cards, 
by  means  of  caoutchouc  or  Indian  rubber,  would  naturally  occur  to  a  person 
acquainted  with  the  properties  of  that  substance,  and  a  patent  was  taken  out 
for  improvements  in  the  manufacture  of  cards,  the  invention  consisting  in 
giving  to  the  backs  elasticity,  derived  from  caoutchouc  or  Indian  rubber.  The 
discovery  of  the  want  of  the  quality  of  elasticity  in  the  backs  of  cards,  must 
be  regarded  as  the  important  feature  in  this  case,  and  it  was  remarked  by 
one  of  the  learned  judges  in  the  course  of  the  argument,  that  the  claim  in 
Walton's  specification  was  more  limited  than  necessary ;  it  might  have  been 
for  giving  the  property  of  elasticity  to  the  backs  of  cards,  that  not  having 
been  done  before,  from  whatever  source  that  elasticity  is  derived,  and  in 
whatever  manner  contributed.  Such  a  claim,  however,  would,  in  the  opin- 
ion of  Mr.  Baron  Alderson,  have  amounted  to  a  claim  for  a  principle.  In  the 
proceedings  on  Neilson's  case,  that  learned  judge  said,  "If  you  claim  every 
shape,  you  claim  a  principle.  There  is  no  difference  between  a  principle  to 
be  carried  into  effect  in  any  way  you  will,  and  claiming  the  principle  itself. 
You  must  claim  some  specific  mode  of  doing  it.  Then  the  rest  is  a  question 
for  the  jury."^ 

The  above  remark  is  strictly  applicable  to  the  case  now  under  considera- 
tion ;  in  Neilson's  case,  the  suggested  claim  was  of  hot  air,  to  furnaces  how- 


1  The  following  illustration  of  the  dincovery  of  two  laws  of  physics  in  recent  times, 
and  of  the  practical  application  of  those  laws,  is  mentioned  by  Sir.  Carpma;!  in  his 
work  on  the  law  of  patents.  Dr.  Faraday  discovered  that  carbonic  acid  gas,  under  a 
pressure  of  several  atmospheres,  assumed  a  liquid  form.  Sir  H.  Davy  discovered  that, 
on  the  application  of  heat  to  this  liquid,  vapor  of  great  expansive  force  was  produced, 
which  was  readily  condensed  by  contact  with  cold  surfaces,  and  he  was  led  to  observe, 
that  these  properties  might,  probably,  at  no  very  distant  period,  be  rendered  available 
for  working  machinery.  Sir  M.  J.  Brunei  subsequently  invented  an  engine,  worked  by 
the  elastic  force  of  the  vapor  of  condensed  carbonic  acid  gas,  by  alternately  bringing 
beat  and  cold  to  act  by  a  peculiar  arrangement  for  this  purpose. 

*  Walton  V.  Potter.  1  Scott's  N.  R.  90,  and  Pat.  Rep. 

*  See  in  Neilson  v.  Harford,  Pat.  Rep.  S55. 

26* 


306  LAW    OF    PATENTS. 

ever  applied  ;  in  Walton's  case  the  suggested  claim  was  of  elasticity  to  the 
backs  of  cards  from  whatever  source  derived.  The  decision  of  the  court  of 
exchequer  in  Neilson's  case,  is  an  express  authority  that  a  claim  of  the  kind 
last  mentioned  would  be  a  claim  for  a  principle.  The  court  said,  "  It  is  very 
difficult  to  distinguish  it  from  the  specification  of  a  patent  for  a  principle,  and 
that  at  first  created  in  the  minds  of  some  of  the  court  much  difficulty  ;  but 
after  full  consideration  we  think  that  the  plaintiff  does  not  merely  claim  a 
principle,  but  a  machine  embodying  a  principle,  and  a  very  valuable  one  too. 
We  think  the  case  must  be  considered  as  if,  the  principle  being  well  known, 
the  plaintiff  had  first  invented  a  mode  of  applying  it  by  a  mechanical  appa- 
ratus to  furnaces;  and  his  invention  then  consists  in  this,  by  interposing  a 
receptacle  for  heated  air  between  the  blowing  apparatus  and  the  furnace. 
In  this  receptacle  he  directs  the  air  to  be  heated  by  the  application  of  heat 
externally  to  the  receptacle,  and  thus  he  accomplishes  the  object  of  applying 
the  blast,  which  was  before  of  cold  air,  in  a  heated  state,  to  the  furnace.' 
It  may,  however,  be  asked,  to  what  does  this  amount,  but  to  an  illustration 
of  the  manner  in  which  the  proviso  in  the  letters-patent  is  to  be  complied 
with  ;  namely,  that  the  inventor  shall  particularly  describe  and  ascertain  the 
nature  of  his  invention,  and  in  what  manner  the  same  is  to  be  performed. 
The  mere  announcement  of  the  idea  that  a  furnace  should  be  blown  with  hot 
instead  of  cold  air,  would  not  in  itself  be  the  subject  of  letters-patent,  nor 
would  it  be  a  compliance  with  the  proviso  as  to  the  specification.  And  in 
the  course  of  the  argument  in  Neilson's  case,  the  Lord  Chief  Baron 
observed,  "  Suppose  it  was  a  patent  in  these  words  :  '  A  patent  for  an  inven- 
tion, by  which  air  shall  be  heated  before  it  enters  the  furnace.  I  do  not 
claim  a  patent  either  for  the  material  or  the  shape  ;  but  the  air  must  pass 
through  a  process  of  heating  before  it  enters  the  furnace."*  And  again, 
"  I  suppose,  in  making  the  specification,  he  considered  that  it  was  proper  to 
propose  some  mechanical  illustration  of  his  principle.  But  suppose  he  had 
said  this:  My  invention,  then,  consists  in  the  application  of  heated  air  lo  the 
furnace,  by  means  of  any  of  the  methods  by  which  air  is  now  heated,  or  any 
other  method,  allowing  air  so  heated  to  pass  through  a  tube  or  aperture  to 
the  furnace.  Probably  he  apprehended,  that  if  he  stated  specifically  any 
form  of  heating  air  he  might  then  have  infringed  on  some  other  patent ; 
therefore,  supposing  he  had  said  simply.  My  invention  consists  in  the  appli- 
cation of  heated  air  by  making  the  air  pass  through  a  healing  process,  before 
it  arrives  at  the  furnace,  but  I  do  not  intend  to  describe  the  form  of  the  recep- 
tacle ;  I  leave  that  to  the  local  circumstances  and  judgment  of  the  parties  to 
deal  with  such  matter,  stating  only  that  the  hotter  you  get  the  air  the 
better."' 


>  Neilson  v.  Harford,  Pat.  Rep.  371. 
*  Printed  case,  4to.  181. 
3  Ibid.  185,  186. 


INFRINGEMENT.  307 

It  is  impossible  to  read  these  observations  of  the  learned  Chief  Baron, 
except  as  a  judgment  that  a  claim  to  the  application  of  hot  air,  in  whatever 
manner  applied,  might  be  a  good  claim.  And  in  connection  with  this,  it  is 
material  to  observe  that  Neilson  was  the  first  to  discover  the  advantage 
resulting  from  the  use  of  hot  air ;  since  so  far  as  blast  furnaces  were  con- 
cerned, it  was  generally  believed  that  cold  air  was  more  advantageous  than 
hot,  and  expensive  contrivances  were  resorted  to  for  keeping  the  blast  cold, 
the  generally  observed  fact  of  the  furnaces  doing  better  in  winter  than  in 
summer,  being  referred  to  the  circumstance  of  the  air  being  colder ;  the  real 
cause  being  that  the  air  contains  much  less  vapor  in  winter  than  in  summer. 

In  the  preceding  cases  of  Clegg's,  Jupe's,  and  Neilson's  inventions,  it 
must  be  observed  that  the  inventor  was  also  the  discoverer  of  the  principle, 
or  leading  feature  of  the  invention,  and  this  creates  a  material  distinction 
between  this  and  the  other  class  of  cases  of  common  occurrence,  in  which 
the  party  is  not  the  discoverer  of  the  principle,  but,  the  principle  being  well 
known,  he  is  the  inventor  of  its  application.  To  a  certain  extent  the  inven- 
tion in  Clegg's  case  comes  within  this  class ;  the  law  of  natural  science  on 
which  it  partly  rests,  namely,  that  of  the  motion  of  a  solid  of  less  specific 
gravity  than  the  fluid  in  which  it  rests,  being  well  known.  The  principle  of 
the  invention,  however,  is  more  extensive  than  this,  since  it  includes  the 
alternate  filling  and  discharging  of  a  vessel  of  gas,  as  the  remark  of  Mr. 
Baron  Alderson,  above  cited,  clearly  shows ;  on  the  whole,  therefore,  in  that 
case,  the  party  was  the  discoverer  of  a  principle  as  well  as  the  inventor  of 
the  means.  But  several  cases  have  occurred,  in  which  the  principle  being 
well  known,  and  the  quality  and  use  of  the  subject  notorious,  invention  has 
existed  in  respect  thereof.  In  these  cases,  inasmuch  as  no  exclusive  privil- 
eges can  exist  in  respect  of  the  law,  property,  or  quality,  it  becomes  neces- 
sary to  consider  the  object  with  which,  the  means  by  which,  and  the  end  for 
which,  the  application  takes  place. 

The  proceedings  on  Kneller's  patent'  furnish  an  illustration  of  cases  o 
this  kind.  The  invention  was  an  application  of  the  well  known  law  of 
physics,  that  the  evaporation  of  a  liquid  is  promoted  by  a  current  of  air ;  for 
instance,  that  if  the  air  be  calm,  the  evaporation  from  the  surface  of  water 
goes  on  slowly,  compared  to  the  evaporation  which  takes  place  when  the 
surface  is  acted  on  by  a  brisk  breeze,  the  fact  being,  that  the  evaporation 
is  obstructed  according  to  Dalton's  views,  partly  by  the  mechanical  obstruc- 
tions of  the  particles  of  air,  but  principally  by  the  superincumbent  atmos- 
phere of  vapor  ;  in  proportion,  then,  as  the  latter  is  removed  by  the  motion  of 
the  air,  evaporation  goes  on  more  rapidly.  The  extension  or  modification  of 
this  general  principle,  by  forcing  air  into  the  lower  part  of  a  liquid,  for  the 
purpose  of  thereby  occasioning  an  increased  evaporation,  was  made  the  sub- 


1  Hullett  V.  Hague,  2  B  &  Aid.  370, 


308  LAW     OF    PATENTS. 

ject  of  experiments,  which  were  communicated  to  the  Royal  Society  in  1755, 
and  published  in  their  transactions.' 

In  1822,  a  patent  was  granted  to  Knight  and  Kirk,  for  "  a  process  for  the 
more  rapid  crystallization,  and  for  the  evaporation  of  fluids  at  comparatively 
low  temperatures  by  a  peculiar  mechanical  application  of  air."  The  speci- 
fication, having  stated  the  general  inconveniences  of  applying  heat  to  fluids, 
described  the  invention  to  consist  in  propelling  a  quantity  of  heated  air  into 
the  lower  part  of  the  vessel  containing  the  liquor,  and  causing  such  heated 
air  to  pass  through  the  whole  body  of  the  liquor,  in  finely  divided  streams, 
by  the  means  of  perforated  pipes,  coiled,  or  otherwise  shaped  and  accommo- 
dated to  the  nature  or  form  of  the  vessel  through  which  the  air  from  the 
blowing  apparatus  should  be  forced  into  the  liquid.  This  invention  was  not 
brought  into  use,  and  appears  to  have  failed  altogether.  In  1828,  Kneller 
had  a  patent  for  "  certain  improvements  in  evaporating  sugar,  which  improve- 
ments are  also  applicable  to  other  purposes  ;  "  the  specification  declared  the 
invention  to  consist  in  forcing,  by  means  of  bellows,  or  other  blowing 
apparatus,  atmospheric,  or  any  other  air,  either  hot  or  cold,  through  the 
liquid  or  solution  subjected  to  evaporation,  by  means  of  pipes,  whose  extrem- 
ities reach  nearly  to  the  upper  or  interior  area  of  the  bottom  of  the  pan  or 
boiler  containing  such  liquid  or  solution. 

In  an  action  for  the  infringement  of  Kneller's  patent,**  it  was  urged  on  the 
part  of  the  defendant,  that  Kneller  claimed  as  an  original  invention,  that 
which  was  but  an  improvement  on  a  prior  patent;  but  Lord  Tenterden,  C.  J., 
and  the  court,  sustained  the  patent,  being  of  opinion  that  the  methods  des- 
cribed in  the  two  specifications  were  essentially  distinct.  In  applying  the 
above  decision,  it  must  be  observed  that  the  prior  invention  had  failed  and 
been  abandoned  ;  at  all  events,  it  was  not  in  use.  Had  the  former  invention 
succeeded,  but  little  doubt  can  be  entertained  that  in  a  contest  between  the 
two  patents,  the  latter  would  have  been  held  to  be  an  infringement  on  the 
former  ;  for  it  must  be  observed,  that  the  object  with  which,  and  the  end  for 
which,  the  air  was  introduced,  were  the  same  in  the  two  cases,  and  the  vari- 
ations in  the  means  were  such  as  would  obviously  suggest  themselves  to  any 
mechanic,  who  set  himself  about  devising  different  means  of  introducing  the 
air.  And  in  further  confirmation  of  this  remark,  it  may  be  observed,  that  in 
Neilson's  case,  though  the  object  was  the  same,  the  detail  of  the  means  by 
which  the  result  was  obtained  was  very  different,  and  the  result  attained 
immeasurably  superior. 

The  uncertainty  in  which  the  preceding  decisions  would  appear  to  leave 
the  question,  to  what  extent  a  principle  may  be  secured,  is  more  apparent 
than  real,  and  no  case  has  occurred  in  which  letters-patent  have  been  held  to 


J  See  an  account  of  the  great  benefit  of  blowing  showers  of  fresh  air  up  through 
distilling  liquors,  in  the  Phil.  Trans.  Vol.  xlv.  p.  312. 
«  Hullett  V.  Hague,  2  B.  &  Aid.  370. 


INFRINGEMENT.  309 

be  vitiated  by  reason  of  the  generality  of  the  claim.  Questions  of  this  kind 
can  only  be  decided  on  the  special  facts  of  each  case.  It  has  been  sug- 
gested,' that  from  the  result  of  the  cases  it  would  appear  that  the  courts  are 
guilty  of  the  apparent  absurdity  of  saying,  "  You  cannot  have  a  patent  for 
a  principle  eo  nomine,  but  if  you  come  before  us  in  modest  guise,  disclaiming 
any  right  to  a  principle,  then,  if  you  have  really  invented  one,  we  will  take 
care  individually  to  protect  you  in  the  exclusive  enjoyment  of  it."  But  this 
apparent  discrepancy  vanishes  if  the  distinction  above  suggested  respecting 
the  use  of  the  terms  be  adopted.  A  principle  co  nomine  is  but  the  enuncia- 
tion of  a  proposition  or  fact ;  the  principle  of  the  invention  is  the  embodiment 
of  that  proposition  or  fact  in  a  practical  form,  and  as  such,  may  in  some 
cases  be  insured  to  the  inventor  in  its  fullest  extent. 


1  See  6  Jur.  330.     See  also  in  the  same  work,  p.  433,  a  notice  of  a  case  (Arnott  v. 
Perry)  which  seems  to  illustrate  and  confirm  some  of  the  preceding  remarks. 


CHAPTER  II. 

OF  THE  REMEDY  FOR  AN  INFRINGEMENT  BY  ACTION  AT  LAW. 

<^  257.  The  Act  of  Congress  of  July  4,  1836,  c.  357,  <§,  14, 
provides  that  damages  may  be  recovered  for  an  infringement 
by  "  an  action  on  the  case  "  ;  a  remedy  which  exists  equally  at 
common  law,  for  the  violation  of  the  right  secured  by  letters- 
patent.^ 

<§.  258.  I.  Parties.  The  statute  also  provides  that  the  action 
shall  be  brought  in  the  name  or  names  of  the  person  or  persons 
interested,  whether  as  patentee,  assignees,  or  as  grantees  of  the 
exclusive  right  within  and  throughout  a  specified  part  of  the 
United  States."  ^ 

<§)  259.  Formerly,  the  grantee  for  a  particular  district  could 
not  bring  an  action  on  the  patent  in  his  own  name.^  But  the 
statute  has  made  him  a  party  interested  in  the  patent,  and 
consequently  in  his  own  district,  he  may  sue  in  his  own 
name."* 


'  Bull.  N.  P.  76. 

*  Act  of  July  4,  1836,  c.  357,  §  14.  It  seems  that  no  previous  notice  or 
claim  of  a  right  to  the  exclusive  use  of  an  invention  is  necessary  to  enable 
a  patentee  to  maintain  an  action  for  an  alleged  violation  of  his  patent  right. 
Ames  V.  Howard,  1  Sumner,  482. 

'  Tylers.  Tuel,  6  Cranch,  324. 

*  Such  a  suit  may  be  maintained  although  the  plaintiff  is  the  grantee  of  a 
right  to  use  only  a  limited  number  of  the  patented  machines  in  the  particular 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    311 

<§,  260.  Where  the  patentee  has  assigned  his  whole  interest, 
either  before  or  after  the  patent  was  taken  out,  the  action  can 
only  be  brought  in  the  name  of  the  assignee ;  ^  but  where  the 
assignment  is  of  an  undivided  part  of  the  interest,  the  action 
should  be  brought  in  the  joint  names  of  the  patentee  and  the 
assignee,  as  representing  the  whole  interest.-  If  the  assign- 
ment has  not  been  made,  but  has  been  merely  agreed  to  be 
made,  the  action  should  be  in  the  name  of  the  patentee,  the 
assignee  not  having  the  interest  until  the  assignment  has  been 
made  and  recorded.^  But  it  may  be  recorded  at  any  time  after 
the  suit  is  brought  and  before  trial."*  An  action  for  an  infringe- 
ment may  be  maintained  against  a  corporation.^ 

<§>  261.  The  Supreme  Court  of  the  United  States  have  held  that 
a  covenant  by  a  patentee,  made  prior  to  the  law  authorizing 
extensions,  that  the  covenantee  should  have  the  benefit  of  any 
improvement  in  the  machinery,  or  alteration  or  renewal  of  the 
patent,  did  not  include  the  extension  by  an  administrator  under 
the  act  of  1836 ;  that  it  must  be  construed  to  include  only 
renewals  obtained  upon  the  surrender  of  a  patent  on  account  of 
a  defective  specification,  and,  therefore,  that  a  plaintiff  who 
claimed  under  an  assignment  from  the  administrator  could  main- 
tain a  suit  against  a  person  who  claimed  under  the  covenant.*^ 

<§>  262.     II.   The  Declaration.  The  declaration  in  an  action 


district,  provided  it  is  an  exclusive  right,  and  it  may  be  maintained  against 
the  patentee  himself.     Wilson  v.  Rousseau,  4  Howard,  646. 

'  Herbert  v.  Adams,  4  Mas.  15. 

2  Whittemore  v.  Cutter,  1  Gallis.  429,  430.  An  assignee  of  the  exclu- 
sive right  to  use  a  certain  number  of  machines  in  "a  certain  district,  may  join 
his  assignor  with  him  in  a  bill  for  an  injunction.  Woodworth  v.  Wilson, 
4  How.  712. 

^  Park  V.  Little,  3  Wash.  196. 

*  Pitts  V.  Whitman,  2  Story's  R.  609,  614. 

^  Kneass  v.  The  Schuylkill  Bank,  4  Wash.  106. 

'  Wilson  V.  Rousseau,  4  Howard,  646. 


312  LAW    OF    PATENTS. 

for  the  infringement  of  a  patent,  should  show  a  title  in  the 
plaintiff,  with  convenient  certainty  ;  and  should  set  forth  all  the 
matters  which  are  of  the  essence.  Without  these  allegations, 
the  plaintiff  fails  to  show  a  right  in  point  of  law  to  ask  the  court 
for  judgment  in  his  favor.  The  several  parts  of  the  declaration 
may  here  be  considered,  in  the  order  in  which  they  occur  in 
pleading. 

<§>  263.  The  declaration  should  commence  with  a  recital 
that  the  plaintiff  was  "  the  original  and  first  inventor "  of 
the  subject-matter,  the  making,  using,  or  vending  of  which 
is  complained  of.  This  averment  is  necessary,  notwithstand- 
ing the  letters-patent,  afterwards  referred  to,  recite  that  the 
plaintiff  has  alleged  that  he  was  the  original  and  first  inven- 
tor, because  it  must  appear  affirmatively,  in  point  of  fact, 
at  the  trial,  that  he  was  so,  and  the  letters-patent  can  only 
be  resorted  to  as  prima  facie  evidence  of  the  fact.  There 
must,  therefore,  be  a  distinct  allegation  of  the  fact,  as  one  of  the 
things  essential  to  the  plaintiff's  title.^ 

"§>264.  For  the  same  reason,  the  declaration  goes  on  to  aver 
that  the  subject-matter  was  "new  and  useful,"  "  not  known  or 
used  before  the  plaintiff's  invention  or  discovery,"  and  "  not  at 
the  time  of  his  application  for  a  patent  in  public  use  or  on  sale 
with  his  consent  or  allowance." 

<§>  265.  Whether  it  is  necessary  to  aver  the  citizenship  of  the 
patentee  has  never  been  determined.  In  practice  it  is  generally 
done,  and  it  is  safer  to  do  so,  than  to  omit  an  averment  which 
might  on  demurrer  be  held  to  be  essential.^     But  it  is  absolutely 


'  The  plaintiff  must  affirm  the  performance  of  all  acts  on  which  his  title 
depends.     Gray  v.  James,  Peters,  C.  C.  R.  476. 

*  Mr,  Phillips  suggests  that  the  necessity  for  this  averment  will  depend  on 
the  construction  to  be  given  to  the  15th  section  of  the  act  of  1836,  by  which, 
if  the  patentee  be  an  alien,  the  defendant  is  permitted  to  show  that  the 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    313 

necessary  to  aver  that  the  plaintiff,  being  the  original  and  first 
inventor,  obtained  letters-patent  for  his  invention,  in  due  form 
of  law,  under  the  seal  of  the  patent  office,  signed  by  the  Secre- 
tary of  State,  and  countersigned  by  the  Commissioner  of  Patents.^ 

<§>  266.  The  substance  of  the  grant  should  then  be  set  forth  ; 
that  is  to  say,  that  the  letters-patent  secured  to  the  plaintiff,  his 
heirs,  administrators,  &,c.,  for  the  term  of  fourteen  years,  the 
full  and  exclusive  right  of  practising  the  invention  ;  which  should 
be  described  briefly,  as  it  is  set  forth  in  the  letters-patent,  of 
which  profert  should  be  made.^  Where  the  declaration 
describes  the  plaintiff's  invention  in  the  words  of  the  patent,  it 


patentee  has  "  failed  and  neglected  fur  the  space  of  eighteen  months  from 
the  date  of  the  patent  to  put  and  continue  on  sale  to  the  public,  on  reasona- 
ble terms,  the  invention  or  discovery."  Phillips  on  Patents,  p.  520,  note. 
This  clause  in  the  statute  can  scarcely  be  considered  as  imposing  a  burthen 
of  proof  of  citizenship  on  the  plaintiff.  It  authorizes  the  defendant  to  avail 
himself  of  the  fact  that  the  plaintiff  is  an  alien,  by  showing  that  the  plaintiff 
has  omitted  to  do  certain  acts ;  but  is  any  thing  more  to  be  inferred  from  the 
clause  than  this,  that  if  the  defendant  means  to  show  the  omission,  he  must 
first  show  that  the  plaintiff  is  an  alien  ?  I  agree,  however,  with  the  learned 
author  that  to  aver  the  citizenship  is  the  safest  course. 

'  Formerly,  patents  bore  the  attestation  of  the  President  of  the  United 
States  ;  and  it  was  held  to  be  necessary  to  aver  that  the  letters  had  been 
so  tested,  and  that  the  patent  had  actually  issued,  or  been  delivered  ;  other- 
wise, the  declaration  would  be  bad  on  demurrer.  Cutting  and  others, 
E.K'ors.  V.  Myers,  4  Wash.  220.  For  the  same  reason,  the  averment  is  now 
necessary  that  the  letters  were  duly  tested  by  the  public  officers  whose  duty 
it  is  to  sign  and  countersign  them;  and  the  mode  of  averring  the  delivery, 
now  usually  practised,  is  to  declare  that  the  plaintiff  on  such  a  day,  "did 
obtain  "  them.  But  it  is  not  necessary  to  aver  that  the  preliminary  steps  to 
obtain  a  patent  were  taken,  because  if  the  declaration  aver  that  the  patent 
was  granted  in  the  form  prescribed  by  law,  the  court,  upon  demurrer,  will 
presume  that  every  thing  was  rightly  done  to  obtain  it.  Fulton's  Ex'ors.  v. 
Myers. 

*  Chit.  PI.  vol.  2.     Profert  of  the  letters-patent,  in  the  declaration,  makes 
them  and  the  specification,  when  produced,  a  part  of  the  declaration,  and  so 
gives  all  the  certainty,  as  to  the  invention  and  improvement  patented,  required 
by  law.     Pitts  v.  Whitman,  2  Story's  R.  609,  614. 
27 


314  LAW     OF     PATENTS. 

is  not  necessary,  that  the  description,  as  stated  in  the  specifica- 
tion, should  be  set  forth.  If  the  defendant  require  the  specifi- 
cation in  his  defence,  he  may  have  it  placed  in  the  record  by 
praying  oyer  of  it.^ 

>§>  267.  The  declaration  is  concluded  by  an  averment  of  the 
value  of  the  patent  right  and  of  the  breach  by  the  defendant, 
and  the  damages  sustained  by  Ihe  plaintiff.^ 

<§.  268.  If  the  plaintiff  sues  in  the  character  of  assignee  of  the 
patent,  he  must  set  forth  both  the  patentee's  title  and  his  own, 
and  should  aver  that  the  assignments  were  duly  recorded  in  the 
patent  office.  If  the  declaration  omit  to  state  that  the  assign- 
ments were  recorded,  the  omission  will  be  cured  by  verdict,  if 
the  general  terms  of  the  declaration  are  otherwise  sufficient  to 
have  authorized  the  admission  of  proof  of  the  recording  at  the 
trial ;  upon  the  general  principle,  that,  after  verdict,  all  the  facts 
necessary  to  have  been  proved  to  enable  the  jury  to  find  a  ver- 
dict for  the  plaintiff,  will  be  presumed  to  have  been  proved,  if 
the  general  terms  of  the  declaration  would  have  let  them  in.^ 

'  Gray  v.  James,  Peters's  C.  C.  R.  476. 

'  See  the  Precedents  in  the  Appendix. 

'  Dobson  V.  Campbell,  1  Sumner,  319,  326,  Story,  J.  "  We  are  of  opin- 
ion that  the  motion  in  arrest  of  judgment  ought  to  be  overruled.  We  accede 
to  the  doctrine  stated  at  the  bar,  that  a  defective  title  cannot,  after  verdict, 
support  a  judgment;  and,  therefore,  it  constitutes  a  good  ground  for  arrest- 
ing the  judgment.  But  the  present  is  not  such  a  case  ;  but  is  merely  the 
case  of  a  good  title  defectively  set  forth.  The  defect  complained  of,  is  the 
omission  to  state,  that  the  assignments,  on  which  the  plaintiff's  title  is 
founded,  v/ere  duly  recorded  in  the  office  of  the  department  of  state,  which  is 
made  essential  to  pass  the  title  of  the  original  patentee,  by  the  fourth  section 
of  the  Patent  Act  of  the  21st  of  February,  1793,  ch.  55.  The  general  prin- 
ciple of  law  is,  that,  where  a  matter  is  so  essentially  necessary  to  be  proved, 
to  establish  the  plaintifFs  right  to  recovery,  that  the  jury  could  not  be  pre- 
sumed to  have  found  a  verdict  for  him,  unless  it  had  been  proved  at  the 
trial,  there  the  omission  to  state  that  matter  in  express  terms,  in  the  declara- 
tion, is  cured  by  the  verdict,  if  the  general  terms  of  the  declaration  are  other- 
wise sufficient  to  comprehend  it.     This  was  the  doctrine  of  Lord   Ellen- 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    315 

<§>  269.  At  the  trial,  proof  may  be  given  of  the  recording  of 
an  assignment,  either  before  or  after  the  action  was  brought.^ 

<§»  270.  III.  Pleadings  and  Defences.  —  The  fifteenth  sec- 
tion of  the  Act  of  1836  provides  that  the  defendant,  in  any 
action  for  the  infringement  of  a  patent,  shall  be  permitted  to 
plead  the  general  issue,  and  to  give  the  statute  and  any  special 
matter  in  evidence,  of  which  notice  in  writing  may  have  been 
given  to  the  plaintiff  or  his  attorney,  thirty  days  before  trial, 
tending  to  prove  that  the  description  and  specification  of  the 
patent  does  not  contain  the  whole  truth  relative  to  the  invention 
or  discovery,  or  that  it  contains  more  than  is  necessary  to  pro- 
duce the  described  effect ;  which  concealment  or  addition  shall 
fully  appear  to  have  been  made  for  the  purpose  of  deceiving  the 
public ;  or  that  the  patentee  was  not  the  original  and  first 
inventor  or  discoverer  of  the  thing  patented,  or  of  a  substantial 
and  material  part  thereof  claimed  as  new,  or  that  it  has  been 
described  in  some  public  work  anterior  to  the  supposed  discov- 
ery by  the  patentee,  or  had  been  in  public  use,  or  on  sale,  v*th 
his  consent  or  allowance,  before  his  application  for  a  patent,  or 
that  he  had  surreptitiously  or  unjustly  obtained  a  patent  for  that 
which  was  in  fact  invented  or  discovered  by  another,  who  was 


borough,  in  Jackson  v.  Pesked,  (1  M.  &  Selw.  R.  234)  ;  and  it  is  very  elabo- 
rately expounded,  by  Mr.  Sergeant  Williams,  in  his  learned  note  to 
1  Saunders  R.  228,  a.  The  other  authorities,  cited  on  behalf  of  the  plaintiff, 
are  to  the  same  effect.  Now,  it  seems  to  us,  that  taking  the  whole  declara- 
tion together,  (however  inartificially  drawn,)  the  plaintifi'  sets  up  a  title  to 
the  patent  right  by  assignment,  and  an  enjoyment  and  use  of  the  right  under 
that  title,  and  that  he  has  been  injured  in  that  right,  under  that  title,  by  the 
piracy  of  the  defendant.  This  cannot  be  true,  nor  could  a  verdict  for  the 
plaintiff  have  been  found  by  the  jury,  if  the  deeds  of  assignment  had  not  been 
duly  recorded ;  for,  unless  that  was  done,  nothing  could  pass  by  the  deeds. 
The  cases  of  Hitchins  v.  Stevens,  (2  Shower  R.  233,)  and  McMurdo  v.  Smith, 
(7  T.  R.  518,)  cited  at  the  bar,  seem  to  us  very  strongly  in  point.  So  is 
France  v.  Fringer,  Cro.  Jac.  44." 

'  Pitts  V.  Whitman,  2  Story,  609.     Of  course,  therefore,  it  is  not  neces- 
sary to  aver  that  the  assignment  was  recorded  within  three  months.     Ibid, 


316  LAW    OF    PATENTS. 

using  reasonable  diligence  in  adapting  and  perfecting  the  same  ; 
or  that  the  patentee,  if  an  alien  at  the  time  the  patent  was 
granted,  had  failed  and  neglected  for  the  space  of  eighteen 
months  from  the  date  of  the  patent,  to  put  and  continue  on  sale 
to  the  public,  on  reasonable  terms,  the  invention  or  discovery  for 
which  the  patent  issued ;  in  either  of  which  cases,  judgment  is 
to  be  rendered  for  the  defendant,  with  costs. 

<^  271.  The  object  of  this  provision  was  to  enable  the  defend- 
ant to  give  certain  special  matters  in  evidence  under  the  plea  of 
the  general  issue.  It  seems  to  have  been  generally  supposed,  at 
a  very  early  period  in  the  history  of  our  legislation,  that  under  a 
plea  of  the  general  issue,  the  defendant  could  not  be  allowed  to 
attack  the  validity  of  the  patent,  and  that  that  plea  only  put 
in  issue  the  question  of  infringement.^  Accordingly,  the  Act 
of  1793,  *§.  6,  enumerated  certain  special  defences,  which  it 
declared  the  defendant  "  shall  be  permitted  "  to  give  in  evi- 
dence under  the  general  issue,  by  first  giving  notice  thereof  to 
the  plaintiff.  The  Supreme  Court  of  the  United  States  con- 
strued the  provision  as  intended  to  relieve  the  defendant  from 
what  were  supposed  to  be  the  difficulties  of  pleading,  by  allow- 
ing him  to  give  in  evidence,  under  the  plea  of  not  guilty,  certain 
matters  affecting  the  patent,  providing,  at  the  same  time,  for  the 
security  of  the  plaintiff  against  surprise,  by  requiring  notice  to 
be  given  of  the  special  matter  to  be  relied  on.  This  notice  was 
substituted  for  a  special  plea.^  The  court  also  declared  that  the 
defendant  was  not  obliged   to  pursue   this  course.     He  might 


'  But  it  was  not  so  in  England.  Until  the  Act  5  and  6,  Wm.  IV.,  c.  83, 
1^  5,  the  usual  plea  was  not  guilty,  which,  putting  in  issue  the  whole  of  the 
declaration,  forced  the  plaintiff  to  support  the  grant  in  all  iis  parts,  and  gave 
to  the  defendant  the  greatest  latitude  for  evidence;  but  now  the  defendant 
must  plead  all  the  defences,  and  must  also  deliver  in  a  list  of  the  objections 
on  which  he  intends  to  rely  at  the  trial.     Godson  on  Patents,  238,  2d  ed. 

*  Evans  V.  Eaton,  3  Wheat.  454  ;  Evans  v.  Kremer,  Peters's  C.  C.  R. 
215.  See  also  the  elaborate  note  on  the  patent  law  in  the  Appendix  to  3 
Wheat,  note  II.  (written  by  Mr.  Justice  Story.) 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.     317 

plead  specially,  in  which  case  the  plea  would  be  the  only  notice 
the  defendant  could  claim  ;  or  he  might  plead  the  general  issue, 
in  which  case  he  must  give  notice  of  the  special  matter  on 
which  he  relied.^ 

^  272.  The  fifteenth  section  of  the  Act  of  1836  is  taken, 
with  some  additional  defences,  from  the  sixth  section  of  the 
Act  of  1793,  and  has  the  same  object  in  view.     It  differs  from 


■  Evans  V.  Eaton,  3  Wheat.  454,  503.  In  this  case,  Mr.  Chief  Justice 
Marshall  said  :  "  The  sixth  section  of  the  Act  appears  to  be  drawn  on  the 
idea,  that  the  defendant  would  not  be  at  liberty  to  contest  the  validity  of  the 
patent  on  the  general  issue.  It,  therefore,  intends  to  relieve  the  defendant 
from  the  difficulties  of  pleading,  when  it  allows  him  to  give  in  evidence  mat- 
ter which  does  affect  the  patent.  But  the  notice  is  directed  for  the  security 
of  the  plaintiff,  and  to  protect  him  against  that  surprise  to  which  he  might 
be  exposed  from  an  rnfair  use  of  this  privilege.  Reasoning,  merely,  on  the 
words  directing  this  notice,  it  might  be  difficult  to  define,  with  absolute  pre- 
cision, what  it  ought  to  include,  and  what  it  might  omit.  There  are,  how- 
ever, circumstances  in  the  act  which  may  have  some  influence  on  this  point. 
It  has  been  already  observed,  that  the  notice  is  substituted  for  a  special  plea ; 
it  is  farther  to  be  observed,  that  it  is  a  substitute  to  which  the  defendant  is 
not  obliged  to  resort.  The  notice  is  to  be  given  only  when  it  is  intended  to 
offer  the  special  matter  in  evidence  on  the  general  issue.  The  defendant  is 
not  obliffed  to  pursue  this  course.  He  may  still  plead  specially,  and  then 
the  plea  is  the  only  notice  which  the  plaintiff  can  claim.  If,  then,  the  defend- 
ant may  give  in  evidence,  on  a  special  plea,  the  prior  use  of  the  machine,  at 
places  not  specified  in  his  plea,  it  would  seem  to  follow  that  he  may  give  in 
evidence  its  use  at  places  not  specified  in  his  notice.  It  is  not  believed  that 
a  plea  would  be  defective,  which  did  not  state  the  mills  in  which  the  machi- 
nery alleged  to  be  previously  used  was  placed. 

But  there  is  still  another  view  of  this  subject,  which  deserves  to  be  con- 
sidered. .The  section  which  directs  this  notice,  also  directs  that  if  the  spe- 
cial matter  stated  in  the  section  be  proved,  'judgment  shall  be  rendered  for 
the  defendant,  with  costs,  and  the  patent  shall  be  declared  void.'  The 
notice  might  be  intended  not  only  for  the  information  of  the  plaintiff,  but  for 
the  purpose  of  spreading  on  the  record  the  cause  for  which  the  patent  was 
avoided.  This  object  is  accomplished  by  a  notice  which  specifies  the  partic- 
ular matter  to  be  proved.  The  ordinary  powers  of  the  court  are  sufficient  to 
prevent,  and  will,  undoubtedly,  be  so  exercised,  as  to  prevent  the  patentee 
from  being  injured  by  the  surprise." 
27* 


318  LAW    OF     PATENTS. 

the  former  act,  by  omitting  the  provision  that  the  patent  "  shall 
be  declared  void,"  if  judgment  is  rendered  for  the  defendant, 
and  by  providing  that  "  when  the  defendant  relies  in  his  defence 
on  the  fact  of  a  previous  invention,  knowledge,  or  use  of  the 
thing  patented,  he  shall  state  in  his  notice  of  special  matter  the 
names  and  ()laces  of  residence  of  those  whom  he  intends  to 
prove  to  have  possessed  a  prior  knowledge  of  the  thing,  and 
where  the  same  thing  had  been  used."  This  provision  was 
added  in  consequence  of  the  construction  given  to  the  former 
act,  to  the  eftect  that  notice  of  the  places  was  not  necessary  to 
be  given. ^  In  other  respects,  the  construction  given  to  the  Act 
of  1793,  *§>  6,  is  applicable  to  the  present  law.  The  defendant 
is  at  liberty  to  plead  specially,  in  which  form  of  pleading  he 
need  give  no  other  notice  of  his  defence  than  the  plea  itself 
gives,  or  he  may  plead  the  general  issue,  and  give  notice  of  the 
special  matter  on  which  he  relies.  The  statute  does  not  under- 
take to  enumerate  all  the  defences  which  may  be  made  to  an 
action  on  a  patent.  It  provides  that  when  certain  facts,  which 
it  enumerates,  are  to  be  relied  on,  and  the  general  issue  is 
pleaded,  the  defendant  shall  give  notice  of  the  facts  which  he 
means  to  put  in  evidence.'-  The  notice  must  be  strictly  con- 
strued ;  if  the  defendant  gives  notice  that  he  will  prove  the 
prior  use  of  the  invention  in  the  United  States,  he  cannot  be 
allowed  to  offer  evidence  of  its  prior  use  in  England.^ 

"§»  273.  But  it  will  be  useful  to  make  a  particular  enumeration 
of  the  defences  that  may  be  made  under  the  general  issue,  with- 
out notice,  before  we  turn  our  attention  to  those  mentioned  in 
the  statute,  of  which  notice  must  be  given,  when  the  general 
issue  is  pleaded. 

<§.  274.  The  defendant  may  show,  under  the  general  issue, 

'  Evans  v.  Eaton,  ante,  note  ;  Evans  v.  Kremer,  Peters's  C.  C.  R.  215. 
*  Whittemore  v.  Cutter,    1    Gallis.    429,  435 ;    Grant   v.   Raymond,   6 
Peters,  218. 

'  Dixon  V.  Moyer,  4  Wash.  68. 


KEMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    319 

without  notice,  that  he  never  did  the  act  complained  of,  that  is, 
that  he  has  not  infringed  the  patent,  or  that  he  was  acting  under 
a  license  or  purchase  from  the  plaintiff.^  He  may  show  that 
the  plaintiff  is  an  alien,  not  entitled  to  a  patent ;  or  that  the 
plaintiff  has  not  a  good  title  as  assignee ;  or  that  his  patent  was 
not  duly  issued  according  to  law,  in  respect  of  the  signatures  of 
the  public  officers,  or  of  the  public  seal,  &c.~ 

<§>  275.  He  may  also  show  that  the  invention  is  not  a  patent- 
able subject ;  that  is  to  say,  admitting  its  novelty,  he  may  show 
that  it  is  not  an  "  art,  machine,  manufacture,  or  composition  of 
matter,"  in  the  sense  of  the  statute.^  But  the  defence  that  the 
subject  is  not  patentable  on  the  ground  of  want  of  novelty,  falls 
under  the  statute,  and  must  be  specified. 

<5,  276.  In  like  manner,  the  defendant  may  show,  under  the 
general  issue,  without  notice,  that  the  invention,  though  new, 
fails  in  point  of  utility,  and  is  worthless  and  frivolous.^ 

-§,  277.  So,  too,  he  may  show  that  there  is  no  specification,  or 
that  the  specification  is  so  ambiguous  and  unintelligible  that  the 
court  cannot  determine  from  it,  what  the  invention  is  that  is 
intended  to  be  patented.  This  is  a  different  issue  from  that 
pointed  out  in  the  statute.  If  the  specification  do  not  describe 
the  invention  in  clear  and  exact  terms,  so  as  to  distinguish  it 


1  Whittemore  v.  Cutter,  1  Gallis.  429,  435 ;  3  Whealon's  R.  Appendix, 
Note  II.  p.  27. 

2  Ibid.     Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9,  11. 

3  That  the  invention  is  not  a  patentable  subject,  admitting  its  novelty,  is 
a  different  issue  from  any  that  is  named  in  the  15th  section  of  the  statute, 
and  it  is  one  that  is  necessarily  raised  by  the  plea  of  "  not  guilty,"  since  the 
declaration  necessarily  imports  that  the  patentee  had  invented  a  patentable 
subject. 

*  Want  of  novelty  is  one  of  the  defences  enumerated  in  the  15th  section, 
but  want  of  utility  is  not ;  but  it  is  a  clear  bar  to  the  action,  upon  the  terms 
of  the  act,  as  well  as  upon  the  general  principles  of  law. 


320  LAW    OF    PATENTS. 

from  other  inventions,  but  be  so  ambiguous  and  obscure  that  it 
cannot  be  ascertained  with  reasonable  certainty  for  what  the 
patent  is  taken,  or  what  it  includes,  the  patent  is  void  for 
ambiguity ;  and  this  is  put  in  issue  by  the  plea  of  not  guilty, 
because  a  clear  and  distinct  specification  of  the  invention 
is  essential  to  the  validity  of  the  patent.^  But  if  the  inven- 
tion is  definitely  described  in  the  patent  and  specification,  so  as 
to  distinguish  it  from  other  inventions  before  known,  there  may 
still  exist  the  defect  described  in  the  fifteenth  section  of  the 
statute,  of  some  concealment  or  addition  made  for  the  purpose 
of  deceiving  the  public ;  and  when  it  is  intended  to  show  this, 
under  the  general  issue,  notice  must  be  given. 

<§>  278.  We  now  come  to  the  special  defences  enumerated  in 
the  fifteenth  section  of  the  statute.  The  statute  provides  that 
the  defendant  may,  under  the  general  issue,  give  the  statute 
itself  in  evidence,-  and  certain  special  matters,  of  which  he 
shall  have  given  notice  in  writing  to  the  plaintiff"  or  his  attorney 
thirty  days  before  trial.^ 


'  3  Wheat.  R.  Appendix,  note  II.  p.  27;  Phillips  on  Patents,  p.  398  ; 
Kneass  v.  The  Schuylkill  Bank,  4  Wash.  9,  13.  In  this  last  case,  Mr. 
Justice  Washington  intimates  that  the  defendant  may  show  under  the  gen- 
eral issue,  and  without  notice  that  the  patent  is  broader  than  the  discovery. 
But  this  must  now  be  otherwise  ;  since  the  15th  section  of  the  Act  of  1836 
describes  one  of  the  issues  which  require  notice,  to  be  that  the  patentee  was 
not  the  original  and  first  inventor  of  the  thing  patented,  or  of  a  substantial 
and  material  part  thereof.  This  is  the  issue  that  the  patent  is  broader  than 
the  invention. 

*  The  meaning  of  the  permission  to  give  the  statute  in  evidence  is,  that 
the  defendant  shall  be  allowed  to  rely  on  any  matter  of  law  enacted  in  the 
statute,  without  pleading  it  specially,  which  must  be  done  when  the  statute 
is  a  private  one.  The  patent  act  is  undoubtedly  a  public  act;  but  from 
abundant  caution,  to  prevent  the  question  of  the  nature  of  the  act  from  being 
raised,  this  provision  was  inserted.  Kneass  v.  The  Schuylkill  Bank,  4 
Wash.  9,  11. 

'  No  witness  can  be  examined,  to  prove  a  prior  use  of  the  invention, 
unless  notice  of  his  name  and  residence  has  been  given.  The  Philadelphia 
and  Trenton  Railroad  Company  v.  Thompson,  14  Peters,  448,  459. 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    321  . 

<§.  279.  The  first  of  these  special  defences  is,  "  that  the  des- 
cription and  specification  filed  by  the  plaintiff,  does  not  contain 
the  whole  truth  relative  to  his  invention  or  discovery,  or  tliat  it 
contains  more  than  is  necessary  to  produce  the  described  effect ; 
which  concealment  or  addition  shall  fully  appear  to  have  been 
made  for  the  purpose  of  deceiving  the  public."  We  have 
already  seen  what  was  the  general  purpose  of  Congress  in  pro- 
viding that  notice  should  be  given,  when  certain  facts  were  to 
be  offered  in  evidence  ;  but  it  is  not  very  easy  to  define  the 
scope  of  the  issue  intended  by  the  above  provision,  or  to  distin- 
guish the  exact  meaning  of  the  statute  in  this  particular.  It  is 
clear,  however,  that  this  issue,  as  we  have  already  suggested,  is 
distinguishable  from  the  issue,  which  presents  the  naked  ques- 
tion whether  there  is  an  intelligible  description  of  the  invention, 
which  will  enable  the  public  to  know  what  it  is.  It  may  help 
us  to  understand  the  present  provision,  if  we  review  the  corres- 
ponding provision  in  the  former  Act,  and  the  decisions  made 
upon  it. 

<§>  280.  The  corresponding  provision  in  the  Act  of  1793,  <§.  6, 
was  in  the  same  terms,  but  that  act  also  provided  that  when 
judgment  on  this  issue  had  been  rendered  for  the  defendant, 
"  the  patent  shall  be  declared  void ;  "  which  is  omitted  in  the 
Act  of  1836,  *§.  15.  In  one  of  the  earliest  reported  cases  in 
which  this  clause  of  the  statute  of  1793  came  under  considera- 
tion, Mr.  Justice  Story  held  that  if  the  invention  is  definitely 
described  in  the  patent  and  specification,  so  as  to  distinguish  it 
from  other  inventions  before  known,  the  patent  is  good,  although 
it  does  not  describe  the  invention  in  such  full,  clear,  and  exact 
terms,  that  a  person  skilled  in  the  art  or  science,  of  which  it  is 
a  branch,  would  construct  or  make  the  thing,  unless  such  defec- 
tive description  or  concealment  was  with  intent  to  deceive  the 
public.  The  reasoning  of  the  learned  judge,  in  this  case,  tends 
to  show  that  he  considered  the  defect  or  concealment,  with 
intent  to  deceive  the  public,  to  refer  to  the  practicability  of 
practising  the  invention  from  the  specification  ;  and  in  a  subse- 


322  LAW    OF    PATENTS. 

quent  case  he  seems  to  consider  that  the  statute  intended  to 
alter  the  common  law,  and  to  declare  the  patent  void,  only 
wlien  the  concealment  or  defect  was  with  such  an  intent.  But 
it  is  not  quite  clear,  whether  he  considered  that  the  issue  raised 
by  an  allegation  that  the  specification  would  not  enable  a  work- 
man to  make  the  thing  described,  is,  as  a  defence  to  the  action, 
not  one  of  the  special  defences  of  the  statute,  and  consequently 
that  it  is  raised  by  the  plea  of  not  guilty,  without  notice.^ 

'  Whittemore  v.  Cutter,  1  Gallis.  429,  433 ;  Lowell  v.  Lewis,  1  Mas. 
182,  187.  The  reasoning  of  the  learned  judge  in  both  these  cases  was  as 
follows  :  "  Another  objection  is  to  the  direction,  that  the  oath  taken  by  the 
inventor,  not  being  conformable  to  the  statute,  formed  no  objection  to  the 
recovery  in  this  action.  The  statute  requires  that  the  patentee  should  swear 
'  that  he  is  the  true  inventor  or  discoverer  of  the  art,  machine,  or  improve- 
ment.' The  oath  taken  by  Whittemore  was,  that  he  was  the  true  inventor 
or  improver  of  the  machine."  The  taking  of  the  oath  was  but  a  prerequi- 
site to  the  granting  of  the  patent,  and  in  no  degree  essential  to  its  validity. 
It  might  as  well  have  been  contended,  that  the  patent  was  void,  unless  the 
thirty  dollars,  required  by  the  11th  section  of  the  act,  had  been  previously 
paid.  We  approve  of  the  direction  of  the  court  on  this  point,  and  overrule 
this  objection. 

Another  objection  is  to  the  direction  respecting  the  specification.  It  was 
as  follows  :  "That  if  the  jury  should  be  satisfied,  that  the  specification  and 
drawings,  filed  by  the  patentee  in  the  office  of  the  Secretary  of  State,  were 
not  made  in  such  full,  clear,  and  exact  terms  and  manner  as  to  distinguish 
the  same  from  all  other  things  before  known,  and  to  enable  any  person 
skilled  in  the  art  or  science,  of  which  it  is  a  branch,  or  with  which  it  is  most 
nearly  connected,  to  make  and  use  the  same,  this  would  not  be  sufficient  to 
defeat  the  rights  of  the  plaintiffs  to  recover  in  this  action,  unless  the  jury 
were  also  satisfied,  that  the  specification  and  drawings  were  thus  materially 
defective  and  obscure  by  design,  and  the  concealment  made  for  the  purpose 
of  deceiving  the  public.  In  this  respect  our  law  differed  from  the  law 
of  England,  that  if  the  specification  and  drawings  were  thus  materially 
defective,  it  afforded  a  presumption  of  a  designed  concealment,  which  the 
jury  were  to  judge  of.  That  in  deciding  as  to  the  materiality  of  the  deficien- 
cies in  the  specification  and  drawings,  it  was  not  sufficient  evidence  to  dis- 
prove the  materiality,  that,  by  studiously  examining  such  specification- and 
drawings,  a  man  of  extraordinary  genius  might  be  able  to  construct  the 
machine,  by  inventing  parts,  and  by  trying  experiments.  The  object  of  the 
law  was,  to  prevent  the  expenditure  of  time  and  money  in  trying  experi- 
ments, and  to  obtain  such  exact  directions,  that,  if  properly  followed,  a  man 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    323 

«^  281.  In  a  subsequent  case,  the  Supreme  Court  of  the  United 
States  decided  that  in  order  to  justify  a  judgment  declaring  a 

of  reasonable  skill  in  the  particular  branch  of  the  art  or  science  might  con- 
struct the  machine,  and  if,  from  the  deficiencies,  it  was  impracticable  for 
such  a  man  to  construct  it,  the  deficiencies  were  material."  In  order  fully 
to  understand  the  objecUon  to  this  direction,  it  is  necessary  to  advert  to  the 
third  section  of  the  Act  of  1793,  which  specifies  the  requisites  to  be  com- 
plied with  in  procuring  a  patent,  and  the  sixth  section  of  the  same  act, 
which  states  certain  defences,  of  which  the  defendant  may  avail  himself  to 
defeat  the  action,  and  to  avoid  the  patent.  The  third  section,  among  other 
things,  requires  the  party  applying  for  a  patent,  to  deliver  a  written  descrip- 
tion of  his  invention,  and  of  the  manner  of  using,  or  process  of  compound- 
ing the  same,  in  such  full,  clear,  and  exact  terms,  as  to  distinguish  the  same 
from  all  other  things  before  known,  and  to  enable  any  person  skilled  in  the 
art  or  science  of  which  it  is  a  branch,  or  with  which  it  is  most  intimately 
connected,  to  make,  compound,  and  use  the  same  ;  and  in  the  case  of  any 
machine,  he  shall  fully  explain  the  principle,  and  the  several  modes,  in  which 
he  has  contemplated  the  application  of  that  principle,  or  character,  by  which 
it  may  be  distinguished  from  other  inventions.  The  sixth  section  provides, 
among  other  things,  that  the  defendant  may  give  in  his  -defence,  that  the 
specification  filed  by  the  plaintiff  does  not  contain  the  whole  truth  relative  to 
his  discovery,  or  that  it  contains  more  than  is  necessary  to  produce  the 
described  effect,  which  concealment  or  addition  shall  fully  appear  to  have  been 
made  for  the  purpose  of  deceiving  the  pxdilic. 

It  is  very  clear,  that  the  sixth  section  does  not  enumerate  all  the  defences, 
of  which  the  defendant  may  legally  avail  himself :  for  he  may  clearly  give 
in  evidence,  that  he  never  did  the  act  attributed  to  him,  that  the  patentee  is 
an  alien  not  entitled  under  the  act,  or  that  he  has  a  license  or  authority  from 
the  patentee.  It  is,  therefore,  argued,  that  if  the  specification  be  materially 
defective,  or  obscurely  or  so  loosely  worded,  that  a  skilful  workman  in  that 
particular  art  could  not  construct  the  machine,  it  is  a  good  defence  against  the 
action,  although  no  intentional  deception  has  been  practised.  And  this  is 
beyond  all  question  the  doctrine  of  the  common  law ;  and  it  is  founded  in 
good  reason  ;  for  the  monopoly  is  granted  upon  the  express  condition,  that 
the  party  shall  make  a  full  and  explicit  disclosure,  so  as  to  enable  the  public, 
at  the  expiration  of  his  patent,  to  make  and  use  the  invention  or  improve- 
ment in  as  ample  and  beneficial  a  manner,  as  the  patentee  himself.  If, 
therefore,  it  be  so  obscure,  loose,  and  imperfect,  that  this  cannot  be  done,  it 
is  defrauding  the  public  of  all  the  consideration  upon  which  the  monopoly  is 
granted.  (Buller,  N.  P.  77;  Turner  v.  Winter,  1  T.  R.  602.)  And  the 
motion  of  the  party,  whether  innocent  or  otherwise,  becomes  immaterial, 
because  the  public  mischief  remains  the  same. 


324  LAW     OF     PATENTS. 

patent  void,  the  defect  or  concealment  must  appear  to  have 
been  made  for  the  purpose  of  deceiving  the  pubhc ;  but  if  the 


It  is  said,  that  the  law  is  the  same  in  the  United  States,  notwithstanding 
the  wording  of  the  sixth  section,  for  there  is  a  great  distinction  between  a 
conceahncnt  of  material  parts,  and  a  defective  and  ambiguous  description  of 
all  the  parts  ;  and  that,  in  the  latter  case,  although  there  may  be  no  inten- 
tional concealment,  yet  the  patent  may  be  avoided  for  uncertainty  as  to  the 
subject-matter  of  it.  There  is  considerable  force  in  the  distinction  at  first 
view  ;  and  yet,  upon  more  close  examination,  it  will  be  difficult  to  support 
it.  What  is  a  defective  description,  but  a  concealment  of  some  parts,  neces- 
sary to  be  known  in  order  to  present  a  complete  view  of  the  mechanism?  In 
the  present  case  the  material  defects  were  stated,  among  other  things,  to 
consist  in  a  want  of  a  specific  description  of  the  dimensions  of  the  compo- 
nent parts,  and  of  the  shapes  and  position  of  the  various  knobs.  Were 
these  a  concealment  of  material  parts,  or  a  defective  and  ambiguous  disclo- 
sure of  them  ?  Could  the  legislature  have  intended  to  pronounce,  that  the 
concealment  of  a  material  spring  should  not,  unless  made  with  design  to 
deceive  the  public,  avoid  the  patent,  and  yet  that  an  obscure  description  of 
the  same  spring  should  at  all  events  avoid  it?  It  would  be  somewhat  haz- 
ardous to  attempt  to  sustain  such  a  proposition. 

It  was  probably  with  a  view  to  guard  the  public  against  the  injury  arising 
from  defective  specifications,  that  the  statute  requires  ihe  letters-patent  to  be 
examined  by  the  Attorney-general,  and  certified  to  be  in  conformity  to  the 
law,  before  the  great  seal  is  affixed  to  them.  In  point  of  practice  this  must 
unavoidably  be  a  very  insuflScient  security,  and  the  policy  of  the  provision, 
that  has  changed  the  common  law,  may  be  very  doubtful.  This,  however, 
is  a  consideration  proper  before  another  tribunal.  We  must  administer  the 
law  as  we  find  it.  And,  without  going  at  large  into  this  point,  we  think 
that  the  manifest  intention  of  the  legislature  was,  not  to  allow  any  defect  or 
concealment  in  a  specification  to  avoid  the  patent,  unless  it  arose  from  an 
intention  to  deceive  the  public.  There  is  no  ground,  therefore,  on  which  we 
can  support  this  objection."     1  Gallis.  433. 

"  An  objection  of  a  more  general  cast  (and  which  might  more  properly 
have  been  considered  at  the  outset  of  the  cause,  as  it  is  levelled  at  the  suffi- 
ciency of  the  patent  itself,)  is,  that  the  specification  is  expressed  in  such 
obscure  and  inaccurate  terms,  that  it  does  not  either  definitely  state  in  what 
the  invention  consists,  or  describe  the  mode  of  constructing  the  machine  so 
as  to  enable  skilful  persons  to  make  one.  I  accede  at  once  to  the  doctrine 
of  the  authority,  which  has  been  cited,  (M'Farlane  v.  Price,  1  Starkie's  R. 
192,)  that  the  patentee  is  bound  to  describe,  in  full  and  exact  terms,  in  what 
his  invention  consists  ;  and,  if  it  be  an  improvement  only  upon  an  existing 
machine,  he  should  distinguish  what  is  new  and  what  is  old  in  his  specifica- 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    325 

defendant  merely  seeks  to  defend  himself,  he  may  do  so  by 
showing  that  the  patentee  has  failed  in  any  of  the  pre-requisites 


tion,  so  that  it  may  clearly  appear  for  what  the  patent  is  granted.  The  rea- 
son of  this  principle  of  law  will  be  manifest  on  the  slightest  examination. 
A  patent  is  grantable  only  for  a  new  and  useful  invention  ;  and  unless  it  be 
distinctly  stated,  in  what  that  invention  specifically  consists,  it  is  impossible 
to  say,  whether  it  ought  to  be  patented  or  not ;  and  it  is  equally  difficult  to 
know  whether  the  public  infringe  upon  or  violate  the  exclusive  right  secured 
by  the  patent.  The  patentee  is  clearly  not  entitled  to  include  in  his  patent  the 
exclusive  useof  any  machinery  already  known  ;  and  if  he  does,  his  patent  will 
be  broader  than  his  invention,  and  consequently  void.  If,  therefore,  the  descrip- 
tion in  the  patent  mixes  up  the  old  and  the  new,  and  does  not  distinctly  ascer- 
tain for  which,  in  particular,  the  patent  is  claimed,  it  must  be  void  ;  since,  if  it 
covers  the  whole,  it  covers  too  much,  and  if  not  intended  to  cover  the  whole,  it 
is  impossible  for  the  court  to  say  what,  in  particular,  is  covered  as  the  new 
invention.  The  language  of  the  patent  act  itself  is  decisive  on  this  point. 
It  requires  (^  3)  that  the  inventor  shall  deliver  a  written  description  of  his 
invention,  "  in  such  full,  clear,  and  exact  terms,  as  to  distinguish  the  same 
from  all  other  things  before  known  ;  and  in  the  case  of  any  machine,  he  shall 
fully  explain  the  principle,  and  the  several  modes,  in  which  he  has  contem- 
plated the  application  of  that  principle  or  character,  by  which  it  may  be  dis- 
tinguished from  other  inventions." 

It  is,  however,  sufficient,  if  what  is  claimed  as  new  appear  with  reasona- 
ble certainty  on  the  face  of  the  patent,  either  expressly  or  by  necessary 
implication.  But  it  ought  to  appear  with  reasonable  certainty,  for  it  is  not 
to  be  left  to  minute  references  and  conjectures,  from  what  was  previously 
known  or  unknown  ;  since  the  question  is  not,  what  was  before  known,  but 
what  the  patentee  claims  as  neio;  and  he  may,  in  fact,  claim  as  new  and 
patentable,  what  has  been  long  used  by  the  public.  Whether  the  invention 
itself  be  thus  specifically  described  with  reasonable  certainty,  is  a  question 
of  law  upon  the  construction  of  the  terms  of  the  patent,  of  which  the  speci- 
fication is  a  part  ;  and  on  examining  this  patent  I  at  present  incline  to  the 
opinion,  that  it  is  sufficiently  described,  in  what  the  patented  invention 
consists. 

A  question  nearly  allied  to  the  foregoing,  is,  whether  (supposing  the 
invention  itself  be  truly  and  definitely  described  in  the  patent)  the  specifica- 
tion is  in  such  full,  clear,  and  exact  terms,  as  not  only  to  distinguish  the 
same  from  all  things  before  known,  but  "  to  enable  any  person  skilled  in  the 
art  or  science,  of  which  it  is  a  branch,  or  with  which  it  is  most  nearly  con- 
nected, to  make,  compound,  and  use  the  same."  This  is  another  requisite 
of  the  statute,  (^  3,)  and  it  is  founded  upon  the  best  reasons.  The  law 
confers  an  exclusive  patent  right  on  the  inventor  of  any  thing  new  and  use- 

28 


326  LAW     OF     PATENTS. 

on  wliich  the  authority  to  issue  a  patent  depends.  This  deci- 
sion made  the  evidence  of  fraudulent  intent  requisite  only  in 
the  particular  case  and  for  the  particular  purpose  of  having  the 
patent  declared  void.' 


fill,  as  an  encouragement  and  reward  for  his  ingenuity,  and  for  the  expense 
and  labor  attending  the  invention.  But  this  monopoly  is  granted  for  a  lim- 
ited term  only,  at  the  expiration  of  whicli  the  invention  becomes  the  property 
of  the  public.  Unless,  therefore,  such  a  specification  was  made,  as  would 
at  all  events  enable  other  persons,  of  competent  skill,  to  construct  similar 
machines,  the  advantage  to  the  public,  which  the  act  contemplates,  would 
be  entirely  lost,  and  its  principal  object  would  be  defeated.  It  is  not  neces-- 
sary,  however,  that  the  specification  should  contain  an  explanation,  level 
with  the  capacities  of  every  person  (which  would,  perhaps,  be  impossible) ; 
but,  in  the  language  of  the  act,  it  should  be  expressed  in  such  full,  clear,  and 
exact  terms,  that  a  person  skilled  in  the  art  or  science,  of  which  it  is  a 
branch,  would  be  enabled  to  construct  the  patented  invention.  By  the  com- 
mon law,  if  any  thing  material  to  the  construction  of  the  thing  invented,  be 
omitted,  or  concealed,  in  the  specification,  or  more  be  inserted  or  added,  than 
is  necessary  to  produce  the  required  effect,  the  patent  is  void.  This  doc- 
trine of  the  common  law  our  patent  act  has  (whether  wisely,  admits  of  very 
serious  doubts,)  materially  altered  ;  for  it  does  not  avoid  the  patent  in  such 
case,  unless  the  "concealment  or  addition  shall  fully  appear  to  have  been 
made  for  the  purpose  of  deceiving  the  public."  (^6.)  Yet,  certainly,  the 
public  may  be  as  seriously  injured  by  a  materially  defective  specification 
resulting  from  mere  accident,  as  if  it  resulted  from  a  fraudulent  design. 
Our  law,  however,  is  as  I  have  stated  ;  and  the  question  here  is,  and  it  is  a 
question  of  fact,  whether  the  specification  be  so  clear  and  full,  that  a  pump- 
maker  of  ordinary  skill,  could,  from  the  terms  of  the  specification,  be  able 
to  construct  one  upon  the  plan  of  Mr.  Perkins."     1  Mas.  187. 

'  Grant  v.  Raymond,  6  Peters,  218,  246.  Mr.  C.  J.  Marshall,  delivering 
the  judgment  of  the  court  in  this  case,  said,  "  Courts  did  not,  at  first,  per- 
haps, distinguish  clearly  between  a  defence  which  would  authorize  a  verdict 
and  judgment  in  favor  of  the  defendant  in  the  particular  action,  leaving  the 
plaintiff  free  to  use  his  patent,  and  to  bring  other  suits  for  its  infringement: 
and  one  which,  if  successful,  would  require  the  court  to  enter  a  judgment 
not  only  for  the  defendant  in  the  particular  case,  but  one  which  declares  the 
patent  to  be  void.     This  distinction  is  now  well  settled. 

If  the  party  is  content  with  defending  himself,  he  may  either  plead  spe- 
cially, or  plead  the  general  issue,  and  give  the  notice  required  by  the  sixth 
section  of  any  special  matter  he  means  to  use  at  the  trial.     If  he  shows 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    327 

«§.  282.  Now  the  statute  of  1836  omits  the  provision  tliat  the 
patent  shall  be  declared  void,  when  judgment  is  rendered  for 


that  the  patentee  has  failed  in  any  of  those  pre  requisites  on  which  the 
authority  to  issue  the  patent  is  made  to  depend,  his  defence  is  complete.  He 
is  entitled  to  the  verdict  of  the  jury  and  the  judgment  of  the  court.  But  if, 
not  content  with  defending  himself,  he  seeks  to  annul  the  patent,  he  must 
proceed  in  precise  conformity  to  the  sixth  section.  If  he  depends  on  evi- 
dence, "tending  to  prove  that  the  specification  filed  by  the  plaintiff  does  not 
contain  the  whole  truth  relative  to  his  discovery,  or  that  it  contains  more 
than  is  necessary  to  produce  the  described  effect,"  it  may  avail  him  so  far  as 
respects  himself,  but  will  not  justify  a  judgment  declaring  the  patent  void, 
unless  such  "concealment  or  addition  shall  fully  appear  to  have  been  made 
for  the  purpose  of  deceiving  the  public  ;  "  which  purpose  must  be  found  by 
the  jury  to  justify  a  judgment  of  vacatur  by  the  court.  The  defendant  is 
permitted  to  proceed  according  to  the  sixth  section,  but  is  not  prohibited 
from  proceeding  in  the  usual  manner,  so  far  as  respects  his  defence  ;  except 
that  special  matter  may  not  be  given  in  evidence  on  the  general  issue  unac- 
companied by  the  notice  which  the  sixth  section  requires.  The  sixth  sec- 
tion is  not  understood  to  control  the  third.  The  evidence  of  fraudulent 
intent  is  required  only  in  the  particular  case,  and  for  the  particular  purpose 
stated  in  the  sixth  section. 

This  instruction  was  material  if  the  verdict  ought  to  have  been  for  the 
defendants,  provided  the  allegations  of  the  plea  were  sustained,  and  if  such 
verdict  would  have  supported  a  judgment  in  their  favor,  although  the  defect 
in  the  specification  might  not  have  arisen  from  design,  and  for  the  purpose 
of  deceiving  the  public.  That  such  is  the  law  we  are  entirely  satisfied. 
The  third  section  requires,  as  preliminary  to  a  patent,  a  correct  specification 
and  description  of  the  thing  discovered.  This  is  necessary  in  order  to  give 
the  public,  after  the  privilege  shall  expire,  the  advantage  for  which  the  priv- 
ileire  is  allowed,  and  is  the  foundation  of  the  power  to  issue  the  patent. 
The  necessary  consequence  of  the  ministerial  character  in  which  the  secre- 
tary acts,  is  that  the  performance  of  the  pre-requisites  to  a  patent  must  be 
examinable  in  any  suit  brought  upon  it.  If  the  case  was  of  the  first  impres- 
sion we  should  come  to  this  conclusion  ;  but  it  is  understood  to  be  settled. 

The  act  of  Parliament  concerning  monopolies  contains  an  exception  on 
which  the  grants  of  patents  for  inventions  have  issued  in  that  country.  The 
construction  of  so  much  of  that  exception  as  connects  the  specification  with 
the  patent,  and  makes  the  validity  of  the  latter  dependent  on  the  correct- 
ness of  the  former,  is  applicable,  we  think,  to  proceedings  under  the  third 
section  of  the  American  act.  The  English  books  are  full  of  cases  in  which 
rt  has  been  held  that  a  defective  specification  is  a  good  bar  when  pleaded  to, 


328  LAW    OF    PATENTS. 

the  defendant,  and  it  leaves  the  ground  of  a  concealment  or 
addition  in  the  specification,  with  intent  to  deceive  the  public, 
simply  a  defence  to  the  action,  of  a  special  nature.  There  can 
be  no  doubt,  therefore,  that  when  the  defendant  proposes  to 
show  that  the  specification  contains  more  or  less  than  a  true 
description  of  the  invention,  and  that  the  concealment  or  addi- 
tion was  made  for  the  purpose  of  deceiving  the  public,  his  plea 


or  a  sufficient  defence  when  given  in  evidence  on  the  general  issue,  on  an 
action  brought  for  the  infringement  of  a  patent  right.  They  are  very  vpell 
summed  up  in  Godson's  Law  of  patents,  title  Specification  ;  and  also  in  the 
chapter  respecting  the  infringement  of  patents,  also  in  Holroyd  on  Patents, 
where  he  treats  of  the  specification,  its  form  and  requisites.  It  is  deemed 
unnecessary  to  go  through  the  cases,  because  there  is  no  contrariety  in 
them,  and  because  the  question  is  supposed  to  be  substantially  settled  in  this 
country.  Pennock  &  Sellers  v.  Dialogue,  1  Peters,  1,  was  not,  it  is  true, 
a  case  of  defect  in  the  specification  or  description  required  by  the  third  sec- 
tion, but  one  in  which  the  applicant  did  not  bring  himself  within  the  provi- 
sion of  the  first  section,  which  requires  that  before  a  patent  shall  issue,  the 
petitioner  shall  allege  that  he  has  invented  a  new  and  useful  art,  machine, 
&c.,  "not  known  or  used  before  the  application.''  This  pre-requisite  of  the 
first  section,  so  far  as  a  failure  in  it  may  affect  the  validity  of  the  patent, 
is  not  distinguishable  from  a  failure  of  the  pre-requisites  of  the  third 
section. 

On  the  trial  evidence  was  given  to  show  that  the  patentee  had  permitted 
his  invention  to  be  used  before  he  took  out  his  patent.  The  court  declared 
its  opinion  to  the  jury,  that  if  an  inventor  makes  his  discovery  public,  he 
abandons  the  inchoate  right  to  the  exclusive  use  of  the  invention.  "It  is 
possible,"  added  the  court,  "  that  the  inventor  may  not  have  intended  to  give 
the  benefit  of  his  discovery  to  the  public."  But  it  is  not  a  question  of  inten- 
tion, "  but  of  legal  inference,  resulting  from  the  conduct  of  the  inventor,  and 
affecting  the  interests  of  the  public.  It  is  for  the  jury  to  say  whether  the 
evidence  brings  this  case  within  the  principle  which  has  been  stated. 
If  it  does,  the  court  is  of  opinion  that  the  plaintiff  is  not  entitled  to  a 
verdict." 

The  jury  found  a  verdict  for  the  defendants,  an  exception  was  taken  to  the 
opinion,  and  the  judgment  was  affirmed  by  this  court.  This  case  aflJrms  the 
principle  that  a  failure  on  the  part  of  the  patentee,  in  those  pre-requisites  of 
the  act  which  authorize  a  patent,  is  a  bar  to  a  recovery  in  an  action  for  its 
infringement ;  and  that  the  validity  of  this  defence  does  not  depend  on  the 
intention  of  the  inventor,  but  is  a  legal  inference  upon  his  conduct." 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    329 

must  either  be  special,  setting  forth  the  defects  and  charging 
the  intent,  or  it  must  be  the  general  issue,  accompanied  by 
notice  of  the  defects  in  the  specification  intended  to  be  relied 
on.  But  I  do  not  conceive  that  the  statute  means  to  say  that 
no  concealment  or  defect  in  a  specification  shall  be  available  as 
a  defence  to  the  action,  under  the  general  issue,  unless  it  was 
made  with  intent  to  deceive  the  public.  The  statute  may  be 
construed  as  if  it  read  thus :  "  Whenever  the  defendant  seeks 
to  show  that  the  specification  does  not  contain  the  whole  truth 
relative  to  the  invention  or  discovery,  or  that  it  contains  more 
than  is  necessary  to  produce  the  described  effect,  and  that  such 
concealment  or  addition  was  made  for  the  purpose  of  deceiving 
the  public,  he  may  plead  the  general  issue,  and  give  such  spe- 
cial matter  in  evidence,  provided  he  shall  have  given  notice," 
&c.  On  the  other  hand,  if  the  defendant  relies  on  a  failure 
in  the  specification  in  respect  of  any  of  the  pre-requisites  for 
issuing  a  patent,  he  may  show  such  failure,  under  a  plea  of  the 
general  issue,  without  any  notice. 

*§>  28.3.  The  next  special  defence  mentioned  in  the  statute  is, 
in  substance,  that  the  subject-matter  is  not  new  ;  that  is,  "  that 
the  patentee  was  not  the  original  and  first  inventor  or  discoverer 
of  the  thing  patented,  or  of  a  substantial  and  material  part 
thereof,  claimed  as  new  ;  or  that  it  had  been  described  in  some 
public  work,  anterior  to  the  supposed  discovery  thereof  by  the 
patentee."  ^ 


'  When  this  defence  is  relied  upon,  it  will  be  incumbent  on  the  defendant 
to  show  that  the  invention  had  been  known,  used,  or  described  in  a  public 
work,  anterior  to  the  supposed  discovery  of  the  patentee.  The  plaintiffs  right 
in  his  invention,  therefore,  relates  back  to  the  original  discovery,  which  may 
be  proved  by  parol,  and  is  not  necessarily  presumed  to  have  been  made  on 
the  day  when  the  patent  issued  ;  although  the  infringement  must  have  taken 
place  after  the  date  of  the  patent.  Dixon  v.  Moyer,  4  Wash.  68,  72.  The 
conversations  and  declarations  of  a  patentee  merely  affirming  that  at  some 
former  period  he  had  invented  a  machine,  may  well  be  objected  to.  But  his 
conversations  and  declarations,  stating  that  he  had  made  an  invention,  and 
describing  its  details,  and  explaining  its  operations,  are  properly  deemed  an 
28* 


,330  LAW    OF      PATENTS. 

«§>  284.  We  have  seen,  in  a  former  chapter  of  this  work, 
when  a  party  is  or  is  not  the  original  and  first  inventor  of  a 
patented  subject ;  and  also  that  a  failure,  in  point  of  novelty,  of 
any  substantial  and  material  part  of  the  alleged  invention,  ren- 
ders the  patent  void  pro  tanto.  In  order  to  ensure  the  plaintiff 
against  surprise,  whenever  this  defence  is  to  be  resorted  to,  the 
same  section  of  the  statute  requires  that  the  defendant  "shall 
state,  in  his  notice  of  special  matter,  the  names  and  places  of 
residence  of  those  whom  he  intends  to  prove  to  have  possessed 
a  prior  knowledge  of  the  thing,  and  where  the  same  had  been 
used."     This  provision  must  be  strictly  complied  with.^ 

»§>  285.  It  is  also  fairly  to  be  inferred,  from  the  requisition, 
that  notice  shall  be  given  of  "  any  special  matter  "  intended  to 
be  offered  in  evidence  "  tending  to  prove "  the  particular 
defence  relied  upon,  that  the  notice  must  describe  whether  the 
whole,  or  a  part,  and  what  part  of  the  invention  is  to  be  charged 
with  want  of  novelty,  and  in  what  public  work  or  works,  the 
whole,  or  a  part,  or  what  part  had  been  described  before  the 
supposed  discovery  by  the  patentee.  There  is  no  limitation  of 
time  within  which  this  defence  must  be  set  up.^ 

*§)  286.  The  stringent  effect  of  this  defence  has  been  materi- 
ally modified,  however,  by  two  other  provisions.  The  first  is 
contained  in  the  two  provisions  which  are  found  at  the  end  of 
the  same  fifteenth  section  of  the  Act  of  1836 ;    "  provided  that 


assertion  of  his  right,  at  that  time,  as  an  inventor,  to  the  extent  of  the  facts 
and  details  which  he  then  makes  known,  although  not  of  their  existence  at 
an  anterior  time.  Such  declarations,  coupled  with  a  description  of  the 
nature  and  objects  of  the  invention,  are  to  be  deemed  part  of  the  res  gestcE, 
and  they  are  legitimate  evidence  that  the  invention  was  then  known  and 
claimed  by  him  ;  and  thus  its  origin  may  be  fixed,  at  least,  as  early  as  that 
period.  The  Philadelphia  and  Trenton  Railroad  Co.  v.  Thompson,  14 
Peters,  448. 

'  Ibid. 

*  Evans  V.  Eaton,  Peters's  C.  C.  R.  322,  348. 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    331 

whenever  it  shall  satisfactorily  appear  that  the  patentee,  at  the 
time  of  making  his  application  for  the  patent,  believed  himself 
to  be  the  first  inventor  or  discoverer  of  the  thing  patented,  the 
same  shall  not  be  held  to  be  void,  on  account  of  the  invention 
or  discovery,  or  any  part  thereof  having  been  before  known  or 
used  in  any  foreign  country,  it  not  appearing  that  the  same  or 
any  substantial  part  thereof  had  before  been  patented  or 
described  in  any  printed  publication  ;  a7id,  provided  also,  that 
whenever  the  plaintiff  shall  fail  to  sustain  his  action,  on  the 
ground  that  in  his  specification  of  claim  is  embraced  more  than 
that  of  which  he  was  the  first  inventor,  if  it  shall  appear  that  the 
defendant  had  used  or  violated  any  part  of  the  invention  justly 
and  truly  specified,  and  claimed  as  new,  it  shall  be  in  the  power 
of  the  court  to  adjudge  and  award,  as  to  costs,  as  may  appear 
to  be  just  and  equitable." 

<§.  287.  The  other  provision  is  contained  in  the  Act  of  INIarch 
3,  1837,  <§>  7,  9,  in  relation  to  a  disclaimer.  The  seventh  sec- 
tion enacts  as  follows  :  "  That,  whenever  any  patentee  shall 
have,  through  inadvertence,  accident,  or  mistake,  made  his  spe- 
cification of  claim  too  broad,  claiming  more  than  that  of  which 
he  was  the  original  or  first  inventor,  some  material  and  substan- 
tial part  of  the  thing  patented,  being  truly  and  justly  his  own, 
any  such  patentee,  his  administrators,  executors,  and  assigns, 
whether  of  the  whole  or  of  a  sectional  interest  therein,  may 
make  disclaimer  of  such  parts  of  the  thing  patented,  as  the  dis- 
claimant  shall  not  claim  to  hold  by  virtue  of  the  patent  or 
assignment,  stating  therein  the  extent  of  his  interest  in  such 
patent ;  which  disclaimer  shall  be  in  writing,  attested  by  one  or 
more  witnesses,  and  recorded  in  the  patent  office,  on  payment 
by  the  person  disclaiming  in  manner  as  other  patent  duties  are 
required  by  law  to  be  paid,  of  the  sum  of  ten  dollars.  And 
such  disclaimer  shall  thereafter  be  taken  and  considered  as 
part  of  the  original  specification,  to  the  extent  of  the  interest 
which  shall  be  possessed  in  the  patent  or  right  secured  thereby, 
by  the  disclaimant,  and  by  those  claiming  by  or  under  him  sub- 


332  "    LAW     OF      PATENTS. 

sequent  to  the  record  thereof.  But  no  such  disclaimer  shall 
affect  any  action  pending  at  the  lime  of  its  being  filed,  except 
so  far  as  may  relate  to  the  question  of  unreasonable  neglect  or 
delay  in  filing  the  same." 

■^i  288.  The    ninth   section  is  as   follows :    "  Be  it   further 
enacted,  any  thing  in  the  fifteenth  section  of  the  act  to  which 
this  is  additional  to  the  contrary,  notwithstanding,  that,  when- 
ever by  mistake,  accident,   or  inadvertence,  and  without  any 
wilful  default,  or  intent  to  defraud  or  mislead  the  public,  any 
patentee  shall  have  in  his  specification  claimed  to  be  the  origi- 
nal and  first  inventor  or  discoverer  of  any  material  or  substantial 
part  of  the  thing  patented,  of  which  he  was  not  the  first  and 
original  inventor,  and  shall  have  no  legal  or  just  right  to  claim 
the  same,  in  every  such  case  the  patent  shall  be  deemed  good 
and  valid  for  so  much  of  the  invention  or  discovery  as  shall  be 
truly  and  bond  fide  his  own  :    Provided,  it  shall  be  a  material 
and  substantial  part  of  the  thing  patented,  and  be  definitely  dis- 
tinguishable from  the  other  parts  so  claimed  without   right  as 
aforesaid.     And  every  such  patentee,  his  executors,  administra- 
tors, and  assigns,  whether  of  the  whole  or  a  sectional  interest 
therein,  shall  be  entitled  to  maintain  a  suit  at  law  or  in  equity, 
on  such  patent  for  any  infringement  of  such  part  of  the  inven- 
tion or  discovery  as  shall  be  bond  fide  his  own  as  aforesaid,  not- 
withstanding the  specification  may  embrace  more  than  he  shall 
have  any  legal  right  to  claim.    But,  in  every  such  case  in  which 
a  judgment  or  verdict  shall  be  rendered  for  the  plaintiff,  he  shall 
not  be  entitled  to  recover  costs  against  the  defendant,  unless  he 
shall  have  entered  at  the  patent  office,  prior  to  the  commence- 
ment  of  the   suit,    a   disclaimer  of  all  that  part  of  the  thing 
patented  which  was  so  claimed  without  right ;  Provided,  how- 
ever, that  no  person  bringing  any  such  suit  shall  be  entitled  to 
the  benefit  of  the  provisions  contained  in  this  section,  who  shall 
have  unreasonably  neglected  or  delayed  to  enter  at  the  patent 
ofl^ice  a  disclaimer  as  aforesaid."  ^ 

*  In  Reed  v.  Cutter,  1  Story,  590,  600,  Mr.  Justice  Story  said  :    "  In 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    333 

>§,  289.  The  result  of  these  various  enactments  is,  that  for  so 
much  of  the  invention  as  has  been  described  in  some  pubhc 
work  anterior  to  the  supposed  discovery  by  the  patentee, 
whether  the  description  was  known  to  him  in  point  of  fact,  or 
not,  —  if  it  be  a  substantial  and  material  part  of  the  thing 
invented,  and  be  claimed  as  new,  —  and  for  so  much  as  had 
been  previously  patented,  the  patent  is  inoperative.  But  the 
mere  previous  knowledge  or  use  of  the  thing  in  a  foreign  coun- 
try will  not  defeat  a  patent  here,  issued  to  an  original  inventor, 
provided  it  had  not  been  previously  patented  or  described  in  a 
printed  publication. 

<§»  290.  It  will  be  observed,  that  the  same  statute  uses  differ- 
ent phraseology  in  describing  the  kind  of  publication  which  is 
to  have  this  effect.  In  the  body  of  the  15th  section  of  the  Act 
of  1836,  it  is  declared  to  be  a  description  in  "some  public 
work  ;  "  and  in  the  proviso  of  the  same  section  it  is  declared  to 
be  "  any  printed  publication."  This  renders  it  somewhat 
doubtful,  as  to  what  kind  of  publication  is  intended.  The 
phrase  "  some  public  work  "  would  seem  to  point  to  a  class  of 
regular  established  publications,  or  to  some  book  publicly  printed 
and  circulated,  so  as  to  be  open  to  the  public ;  while  the  phrase 
"any  printed  publication"  is  broad  enough  to  include  any 
description  printed  in  any  form  and  published  or  circulated  to 


respect  to  another  point,  stated  at  the  argument,  I  am  of  opinion,  that  a  dis- 
claimer, to  be  effectual  for  all  intents  and  purposes,  under  the  Act  of  1837, 
ch.  45,  (^  7  and  9)  must  be  filed  in  the  patent  office  before  the  suit  is  brought. 
If  filed  during  the  pendency  of  the  suit,  the  plaintiff  will  not  be  entitled  to  the 
benefit  thereof  in  that  suit.  But  if  filed  before  the  suit  is  brought,  the  plain- 
tiff will  be  entitled  to  recover  costs  in  such  suit,  if  he  should  establish,  at  the 
trial,  that  a  part  of  the  invention,  not  disclaimed,  has  been  infringed  by  the 
defendant.  Where  a  disclaimer  has  been  filed,  either  before  or  after  the 
suit  is  brought,  the  plaintiff  will  not  be  entitled  to  the  benefit  thereof,  if  he 
has  unreasonably  neglected  or  delayed  to  enter  the  same  at  the  patent  office. 
But  such  an  unreasonable  neglect  or  delay  will  constitute  a  good  defence 
and  objection  to  the  suit. 


334  LAW     OF     PATENTS. 

any  extent  and  in  any  manner.  Taking  the  whole  section 
together,  however,  and  looking  to  the  apparent  policy  of  the 
statute,  it  is  probable  that  the  intention  of  Congress  was,  to 
make  it  a  conclusive  presumption  that  the  patentee  had  seen 
any  printed  description  of  tlie  thing,  which  had  been  so  printed 
and  published  as  to  be  accessible  to  the  public ;  but  not  to  adopt 
that  presumption  in  cases  of  printed  descriptions  published  and 
circulated  in  such  a  manner  as  not  to  be  accessible  either  to  the 
public  or  to  him.  If  the  presumption  were  adopted  in  cases  of 
the  latter  class  of  publications,  an  original  and  meritorious  inventor 
might  be  defeated  of  his  patent,  by  showing  that  the  thing  had, 
in  a  foreign  country,  been  privately  described  in  a  printed  paper 
published  to  a  single  individual ;  which  certainly  would  not  be 
a  description  in  a  "  public  work,"  although  it  would  be  a 
description  in  a  "  printed  publication."  When  it  is  considered 
that  the  statute  excepts  cases  even  where  the  thing  had  been 
known  or  used  abroad,  provided  it  had  not  been  patented,  or 
described  in  any  printed  publication,  it  seems  reasonable  to  sup- 
pose that  the  publication  intended  is  one  to  which  the  public 
could  have  access  ;  and  this  construction  is  fortified  by  the  con- 
sideration that  the  defence  enacted  in  this  section,  to  which  the 
proviso  establishes  the  exception  is,  that  the  thing  had  been 
described  in  "  some  public  work."  ^ 

<§>  291.  If  this  be  so,  it  would  seem  to  be  a  question  for  the 


*  The  statute  of  1799,  ^6,  used  only  the  phrase  "  described  in  some  pub- 
lic work,"  and  did  not  contain  the  proviso  introduced  into  the  act  of  1836, 
Marshall,  C.  J.,  in  Evans  v.  Eaton,  3  Wheat.  454,  514,  commenting  on  the 
former  statute,  said,  "  It  may  be  that  the  patentee  had  no  knowledge  of  this 
previous  use  or  previous  description  ;  still  his  patent  is  void  ;  the  law  supposes 
he  may  have  known  it.'^  It  is,  therefore,  by  adopting  a  presumption  of  know- 
ledge, that  the  law  declares  the  patent  void.  But  there  could  be  no  reason 
Ojr  justice  in  adopting  such  a  presumption,  in  cases  where  the  printed  descrip- 
tion had  not  come  into  the  possession  of  the  public  ;  and  it  is  manifest  that 
the  former  statute  did  not  mean  to  adopt  it  in  such  cases,  since  it  uses  only 
the  phrase  "  public  work." 


REMEDY  FOR  INFRINGEMENT  BY  ACtlON  AT  LAW.    335 

jury,  under  all  the  circumstances  under  which  the  publication 
has  taken  place,  to  determine  whether  the  description  was  so 
printed  and  published,  as  to  be  accessible  to  the  public,  where 
the  publication  took  place.  If  it  was  so  accessible,  the  pre- 
sumption is  against  the  patentee,  and  his  patent  will  be  defeated, 
notwithstanding  he  may  not  have  seen  it ;  because  the  descrip- 
tion was  already  in  the  possession  of  the  public. 

<§)  292.  What,  then,  constitutes  a  "  description  ?  "  No  judi- 
cial construction  has  yet  been  given  to  this  term.  It  can  scarcely 
be  supposed,  however,  that  a  mere  suggestion  of  the  possibility 
of  constructing  the  machine,  or  other  thing,  which  may  have 
been  subsequently  patented,  is  what  the  statute  intends.  The 
reason  why  the  statute  adopts  the  presumption  of  knowledge, 
on  the  part  of  the  subsequent  patentee,  is,  that  a  knowledge  of 
the  thing  was  already  in  the  possession  of  the  public.  It  makes 
knowledge  and  the  means  of  knowledge  on  the  part  of  the  pub- 
lic the  same  thing;  and  acting  upon  this  principle,  it  holds  that 
the  public  have  acquired  nothing  from  the  specification  of  the 
patentee,  which  they  did  not  possess  before,  and  that  the  patentee 
has  invented  nothing,  which  he,  as  one  of  the  public,  could  not 
have  derived  from  the  means  of  knowledge  which  the  public 
before  possessed.^  Hence  it  is,  that  the  production  of  a  prior 
description,  which  was  in  the  possession  of  the  public,  negatives 
the*  title  of  the  patentee  as  the  first  inventor.  But  it  follows 
necessarily,  from  this  view  of  the  principle  on  which  the  law 
proceeds,  that  the  description  must  be  such  as  to  give  the  pub- 
lic the  means  of  knowledge,  or,  in  other  words,  must  of  itself 
enable  the  pubhc  to  practise  the  invention.  It  is  not  necessary 
that  the  invention  should  have  been  reduced  to  practice  ;  but 
unless  the  description  would  enable  the  public,  without  further 
invention  to  put  the  thing  in  practice,  it  cannot  be  said  that  a 


'  A  man  cannot  be  said  to  be  the  inventor  of  that  which  has  been  exposed 
to  public  view,  and  which  he  might  have  had  access  to  if  he  had  thought 
fit."     Lord  Abinger,  C.  B.  in  Carpenter  v.  Smith,  Webs.  Pat.  Cas.  535. 


336  •       LAW    OF    PATENTS. 

knowledge  of  that  thing  is  in  the  possession  of  the  public. 
Accordingly,  it  has  been  laid  down  by  two  eminent  writers 
on  the  patent  law,  that  the  description  which  is  to  have  the 
effect  of  defeating  a  subsequent  patent,  ought  to  approach  the 
character,  and  in  some  degree  to  answer  the  purposes  of  a  spe- 
cification, by  serving  as  a  direction  for  making,  doing,  or  prac- 
tising the  thing  which  is  the  subject  of  the  patent.^  But  mere 
speculations  or  suggestions  of  an  experimental  kind,  not  stated 
in  such  a  way  as  to  serve  for  a  practical  direction,  are  entirely 
analogous  in  their  character  to  abortive  and  unsuccessful  exper- 
iments in  practice.  The  Marquis  of  Worcester's  Century  of 
Inventions  contained  many  hints  and  speculations,  on  which 
subsequent  inventors  have  acted  ;  but  as  they  were  the  mere 
speculations  of  an  ingenious  man,  not  reduced  by  him  to  prac- 
tice, and  not  so  stated,  that  the  statement  would  answer  for  a 
rule  of  working,  without  the  exercise  of  invention  on  the  part 
of  the  public,  they  have  not  been  held  to  have  defeated  the 
patents  to  which  they  gave  rise.^ 

<§.  293.  The  defendant,  therefore,  to  return  to  the  considera- 


>  Phillips  on  Patents,  p.  175.  Mr.  Webster  (Pat.  Cas.  719,  note,)  says, 
"  But  whatever  may  be  the  peculiar  circunastances  under  which  the  publica- 
tion takes  place,  the  account  so  published,  to  be  of  any  effect  in  law  as  a 
publication,  noust,  on  the  authority  of  the  principal  case,  be  an  account  of  a 
complete  and  perfect  invention,  and  published  as  such.  If  the  invention  be 
not  described  and  published  as  a  complete,  perfected,  and  successful  inven- 
tion, but  be  published  as  an  account  of  some  experiment,  or  by  way  of  sug- 
gestion and  speculation,  as  something  which,  peradventure,  might  succeed, 
it  is  not  such  an  account  as  will  vitiate  subsequent  letters-patent.  It  would 
appear  to  be  a  test  not  wholly  inapplicable  to  cases  of  this  nature,  to  inquire 
whether  what  is  so  published  would  be  the  subject  of  letters-patent,  because, 
inasmuch  as  that  which  rests  only  in  experiment,  suggestion,  and  speculation, 
cannot  be  the  subject  of  letters-patent,  it  would  be  unreasonable  that  what 
could  not  be  the  subject  of  letters-patent,  supposing  letters-patent  granted 
in  respect  thereof,  should  vitiate  letters-patent  properly  granted." 

*  See  the  observations  of  Lord  Abinger,  C.  B.,  in  Carpenter  v.  Smith, 
Webs.  Pat.  Cas.  534. 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    337 

tion  of  this  defence,  —  who  gives  notice  of  the  statute  defence 
of  want  of  novelty,  will  not  be  defeated  in  it,  if  he  proves  a 
material  part  of  the  invention  to  have  been  known  or  used 
before  the  discovery  by  the  patentee,  provided  lie  sliows  that 
the  specification  was  made  broader  than  the  real  discovery  of 
the  plaintiff^,  with  "  wilful  default  or  intent  to  defraud  or  mislead 
the  public."  But  if  it  was  made  broader  than  the  real  discov- 
ery, through  accident  or  inadvertence,  the  patent  will  still  be 
good,  and  an  action  may  be  maintained  for  so  much  of  the 
invention  or  discovery  as  is  bond  fide  the  invention  or  discovery 
of  the  patentee,  provided  it  is  a  material  and  substantial  part  of 
the  thing  patented,  and  is  definitely  distinguishable  from,  the 
other  part  which  the  patentee  had  no  right  to  claim  ;  unless 
there  has  been  an  unreasonable  neglect  or  delay  to  file  the  dis- 
claimer.^ No  costs,  however,  can  be  recovered  in  such  an 
action,  unless  the  plaintifl",  before  bringing  his  action,  has  filed 
in  the  patent  office  a  disclaimer  of  all  that  part  of  the  thing 
patented  which  his  original  specification  should  not  have  claimed. 
If  the  disclaimer  is  filed  before  the  action  is  brought,  but  the 
entry  of  it  at  the  patent  office  has  been  unreasonably  neglected 
or  delayed,  the  defence  of  a  want  of  novelty  in  any  material 
respect,  from  whatever  cause  the  defect  in  the  original  specifica- 
tion arose,  will  be  admitted  as  a  bar  to  the  action  ;  and  the 
question  of  unreasonable  neglect  or  delay  will  be  a  question  of 
law  for  the  court. 

<§>  294.  Of  course  a  defence  which  goes  to  the  originality  of 
a  material  and  substantial  part  of  the  thing  patented,  the 
essence  of  the  plaintiff's  invention,  as  is  most  frequently  the 
case,  will  not  be  affected  by  these  provisions. 


'  It  seems  that  the  9ih  section  was  intended  to  cover  inadvertences  and 
mistakes  of  law,  as  well  as  of  fact ;  and,  therefore,  a  claim  of  an  abstract 
principle  would  be  within  its  provisions.     Wyeth  v.  Stone,  1  Story's  K. 
273,  295.     See  further  as  to  Disclaimer,  ante. 
29 


338  LAW    OF    PATENTS. 

>§,  295.  Care  is  to  be  taken,  therefore,  in  framing  this  defence, 
to  ascertain,  in  the  first  place,  whether  the  whole  or  only  a  part 
of  the  substance  of  the  thing  patented  is  open  to  the  objection 
of  prior  use  or  knowledge  ;  and  in  the  second  place,  whether  a 
disclaimer  has  been  filed.  If  a  disclaimer  has  been  filed  in 
reasonable  time,  the  defence  of  a  want  of  novelty  that  goes 
only  to  a  part  of  the  thing  patented,  and  still  leaves  a  material 
and  substantial  part  unaflfected  by  the  objection,  will  not  be  an 
answer  to  the  action,  but  will  simply  prevent  the  recovery  of 
costs.  But  a  defence  which  goes  to  the  originality  of  the 
whole  patent,  and  leaves  nothing  new  that  is  material  and  sub- 
stantial, and  capable  of  distinction  as  the  subject-matter  of  the 
plaintiff's  invention,  will  be  an  answer  to  the  action,  notwith- 
standing any  disclaimer.  It  is  obviously  necessary,  therefoie, 
to  specify  in  the  notice  of  defence  the  particular  parts  of  the 
thing  patented  which  it  is  intended  to  attack.^ 

<^  296.  Another  of  the  statute  defences  is  that  the  patentee 
had  allowed  his  invention  to  become  public,  before  his  applica- 
tion for  a  patent,  or,  as  it  is  expressed  in  the  statute,  that  it 
"  had  been  in  public  use,  or  on  sale,  with  the  consent  or  allow- 
ance of  the  patentee  before  his  application  for  a  patent."  This 
provision  is  intended  to  embody  the  defence  of  an  abandon- 
ment or  dedication  to  the  public  of  his  invention  by  the 
patentee,  prior  to  his  application  for  a  patent.  The  question 
whether  a  patentee  by  any  and  what  degree  of  use  of  his  inven- 
tion before  his  application  for  a  patent,  could  lose  his  inchoate 
right  in  the  thing  invented,  and  not  be  able  afterwards  to 
resume  it  at  his  pleasure,  arose  before  the  statute  of  18-36  was 
passed,  and  the  Supreme  Court  of  the  United  States  declared 
that  an  inventor  might  undoubtedly  abandon  his  invention,  and 
surrender  or  dedicate  it  to  the  public  ;  and  that  the  question 


'  See  further  an  elaborate  constriicfion  of  the  7th  and  9th  sections,  as  to 
a  disclaimer,  in  the  opinion  of  Mr.  Justice  Story,  in  the  case  of  Wyeth  v. 
Stone,  1  Storv's  R.  273. 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    339 

wliich  generally  arises  is,  whether  the  acts  or  acquiescence  of 
the  party,  furnish,  in  the  given  case,  satisfactory  proof  of  such 
an  abandonment  or  dedication  to  the  public.  The  court  held 
that  the  true  construction  of  the  then  existing  law  was,  that 
the  first  inventor  cannot  acquire  a  good  title  to  a  patent,  if  he 
suffers  the  thing  invented  to  go  into  public  use,  or  to  be  pub- 
licly sold  for  use,  before  he  makes  application  for  a  patent ;  that 
such  a  voluntary  act,  or  acquiescence  in  the  public  sale  or  use, 
is  an  abandonment  of  his  right ;  or  rather  creates  a  disability  to 
comply  with  the  terms  and  conditions  of  the  law,  on  which 
alone  the  public  officer  is  authorized  to  grant  a  patent.^  In  a 
more  recent  case,  the  same  court  re-affirmed  this  construction 
of  the  patent  laws,  and  held  that  the  right  of  an  alien  patentee 
was  vacated  in  the  same  manner  by  a  foreign  use  or  knowledge 
of  his  invention,  under  the  then  existing  statutes.- 

*§.  297.  It  was  the  object  of  the  clause  now  under  considera- 
tion to  make  this  defence  of  a  prior  abandonment  or  dedication 
to  the  public  available  under  the  general  issue,  upon  notice  of 
the  facts  intended  to  be  proved.  By  "public  use"  is  meant 
use  in  public  ;  that  is  to  say,  if  the  inventor  himself  makes  and 
sells  the  thing  to  be  used  by  others,  or  it  is  made  by  one  otlier 
person  only,  with  his  knowledge  and  without  objection,  before 
his  application  for  a  patent,  a  fortiori,  if  he  suffers  it  to  get  into 
general  use,  it  will  have  been  in  "  public  use."  ^  But  where  the 
patentee  alone  makes  the  thing  for  the  purposes  of  experiment 
and  completion,  without  selling  it  to  be  used  by  others,  the 
term  "public  use  "  is  not  applicable.'* 

<§>  298.  An  important  question  next  arises,  as  to  what  will 
constitute    proof    of    the    •'  consent    and    allowance "    of    the 


'  Pennock  v.  Dialogue,  2  Peters,  1. 

^  Shaw  V.  Cooper,  7  Peters,  292.     • 

^  Pennock  v.  Dialogue  ;  Shaw  v.  Cooper ;  Melius  v.  Silsbee,  4  Mas.  108. 

*  Shaw  V.  Cooper. 


340  LAW    OF    PATENTS. 

patentee  to  the  "public  use  or  sale"  of  his  invention  before 
his  application.  In  the  first  place,  a  knowledge  of  such  public 
use  or  sale  by  others,  without  objection  on  his  part,  will  go  far 
towards  raising  the  presumption  of  an  acquiescence,  and  in 
some  cases  will  be  a  sufficient  proof  of  it.  The  question  in 
such  cases  is  as  to  his  consent ;  and  if  knowledge  of  the  use  of 
his  invention  by  others  is  brought  home  to  him,  and  no  exclu- 
sive right  has  been  asserted  by  him  against  that  use,  his  silence 
will  furnish  very  strong  evidence  that  he  has  waived  his  right. ^ 
If  the  evidence  shows  a  long  acquiescence,  or  a  very  general 
use,  it  will  be  conclusive.- 

*§>  299.  In  the  second  place,  although  acquiescence  cannot  be 
presumed  without  knowledge,  such  knowledge  may  be  pre- 
sumed from  the  circumstances,  and  is  not  always  required  to  be 
proved  by  direct  evidence.^ 

"§>  300.  In  the  third  place,  no  particular  lapse  of  time  is  neces- 
sary to  be  shown,  after  knowledge  and  acquiesence  are  estab- 
lished, in  order  to  prove  an  abandonment  or  dedication  to. the 
public.  In  one  of  the  cases  the  invention  was  made  in  the  year 
1804,  and  suffered  to  go  into  general  use  without  any  claim  of 
an  exclusive  right,  or  any  objection,  and  without  receiving  any 
compensation,  until  the  year  1822.'*  In  another  case  the 
invention  was  completed  in  1811,  and  the  letters-patent  were 
obtained  in  1818  ;  in  the  interval,  a  single  individual  had  made 
and  publicly  sold  large  quantities  of  the  thing  patented,  under 
an  agreement  with  the  inventor  as  to  price.°  In  a  third  case, 
the  inventor,  who  was  a  foreigner,  came  to  this  country  in  1817, 
and  might  lawfully  have  applied  for  a  patent  in  1819,  but  did 


'  Melius  V.  Silsbee,  4  Mas. 

^  Jl/id;  Shaw  v.  Cooper. 

»  Shaw  V.  Cooper,  7  Peters,  292,  321. 

*  Melius  f.  Silsbee,  4  Mas. 

^  Pennock  v.  Dialogfue. 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    341 

not  do  SO  until  three  years  afterwards.  It  appeared  that  he 
invented  the  instrument  in  1813  or  1814,  and  made  it  known 
to  certain  persons  in  England,  by  or  through  whom,  contrary  to 
his  intention,  it  was  publicly  used  and  sold  there. ^  In  a  fourth 
case,  in  England,  the  patentee  had  sold  the  article  in  the  public 
market  four  months  before  the  date  of  the  patent.'-  In  all  these 
cases  the  patentee  was  held  to  have  abandoned  or  dedicated  to 
the  public  his  right  in  the  invention. 

<§>  301.  But  on  the  other  hand  it  is  a  still  further  question, 
what  constitutes  a  public  use,  with  the  consent  or  allowance  of 
the  patentee  ?  What  acts,  in  other  terms,  within  a  longer  or 
shorter  period  of  time,  or  what  permission  to  use,  granted  or 
allowed  to  several  persons,  or  restricted  to  a  single  instance,  or 
what  use  by  the  patentee  himself,  will  amount  to  an  abandon- 
ment or  dedication  to  the  public?  Is  the  intention  with  which 
the  acts  are  done,  or  the  use  permitted,  an  dement  in  the  ques- 
tion, or  is  the  intention  wholly  immaterial,  provided  certain  acts 
are  done,  or  a  certain  use  is  permitted  ?  In  determining  these 
questions,  it  is  necessary  to  discriminate  between  the  cases  of  a 
use  permitted  to  others,  or  of  a  knowledge  imparted  to  others, 
and  the  exercise  or  practice  of  the  invention  by  the  patentee 
himself. 

<§.  302.  In  the  case  of  Shaw  v.  Cooper,  already  referred  to, 
the  Supreme  Court  of  the  United  States  said  that  the  intention 
of  the  inventor  is  not  the  true  ground  in  these  cases  ;  that 
"  whatever  may  be  his  intention,  if  he  suffers  the  invention  to 
get  into  public  use,  through  any  means  whatsoever,  without 
an  immediate  assertion  of  his  right,  he  is  not  entitled  to  a 
patent;  nor  will  a  patent  obtained  under  such  circumstances, 
protect  his  right."  ^     The  meaning  of  this  obviously  is,  that  no 


'  Shav?  V   Cooper,  7  Peters,  292. 
«  Wood  V.  Zimmer,  1  Holt,  N.  P.  C.  60. 
*  7  Peters,  292,  323. 
29* 


342  LAW     OF    PATENTS. 

matter  what  the  intention  of  the  patentee  was,  in  imparting  to 
another  a  knowledge  of  his  invention,  if  the  person  or  persons 
to  whom  he  had  so  imparted  it,  afterwards,  though  fraudulently, 
use  the  invention  in  public,  and  the  patentee  looks  on  without 
objection  or  assertion  of  his  right,  the  public  will  have  become 
possessed  of  the  invention,  and  the  patentee  cannot  resume  his 
right  in  it  by  obtaining  a  patent.  This  meaning  is  apparent 
from  other  parts  of  the  opinion  in  the  same  case ;  for  the  court 
say,  that  if  the  invention  has  become  known  to  the  public 
through  fraudulent  means,  the  patentee  should  assert  his  right 
immediately,  and  take  the  necessary  steps  to  legalize  it.^     So, 


'  "  Vigilance  is  necessary  to  entitle  an  individual  to  the  privileges  secured 
under  the  patent  law.  It  is  not  enough  that  he  should  show?  his  right  by 
invention,  but  he  naust  secure  it  in  the  mode  required  by  law.  And  if  the 
invention,  through  fraudulent  means,  shall  be  made  known  to  the  public, 
he  should  assert  his  ftght  immediately,  and  take  the  necessary  steps  to 
legalize  it. 

The  patent  law  was  designed  for  the  public  benefit,  as  well  as  for  the  ben- 
efit of  inventors.  For  a  valuable  invention,  the  public,  on  the  inventor's 
complying  with  certain  conditions,  give  him  for  a  limited  time  the  profits 
arising  from  the  sale  of  the  thing  invented.  This  holds  out  an  inducement 
for  the  exercise  of  genius  and  skill  in  making  discoveries  whidh  may  be 
useful  to  society  and  profitable  to  the  discoverer.  But  it  was  not  the  inten- 
tion of  this  law,  to  take  from  the  public  that  of  which  they  were  fairly  in 
possession. 

In  the  progress  of  society  the  range  of  discoveries  in  the  mechanic  arts, 
in  science,  and  in  all  things  which  promote  the  public  convenience,  as  a 
matter  of  course,  will  be  enlarged.  This  results  from  the  aggregation  of 
mind,  and  the  diversities  of  talents  and  pursuits,  which  exist  in  every  intelli- 
gent community.  And  it  would  be  extremely  impolitic  to  retard  or  embar- 
rass this  advance,  by  withdrawing  from  the  public  any  useful  invention  or 
art,  and  making  it  a  subject  of  private  monopoly.  Against  this  consequence, 
the  legislature  have  carefully  guarded  in  the  laws  they  have  passed  on  the 
subject.  It  is  undoubtedly  just  that  every  discoverer  should  realize  the  ben- 
efits resulting  from  his  discovery,  for  the  period  contemplated  by  law.  But 
these  can  only  be  secured  by  a  substantial  compliance  with  every  legal  requi- 
site. His  exclusive  right  does  not  rest  alone  upon  his  discovery,  but  also 
upon  the  legal  sanctions  which  have  been  given  to  it,  and  the  forms  of  law 
with  which  it  has  been  clothed. 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    343 

too,  it  is  apparent  from  the  opinion  of  the  same  court  in  Pen- 
nock  V.  Dialogue,  that  it  is  the  voluntary  acquiescence  of  the 


No  matter  by  what  means  an  invention  may  be  communicated  to  the  pub- 
lic, before  the  patent  is  obtained;  any  acquiescence  in  the  public  use,  by  the 
inventor,  will  be  an  abandonment  of  his  right.  If  the  right  were  asserted 
by  him  who  fraudulently  obtained  it,  perhaps  no  lapse  of  time  could  give  it 
validity.  But  the  public  stand  in  an  entirely  different  relation  to  the  inventor. 
The  invention  passes  into  the  possession  of  innocent  persons,  who  have  no 
knowledge  of  the  fraud,  and  at  a  considerable  expense  perhaps,  they  appro- 
priate it  to  their  own  use.  The  inventor  or  his  agent  has  full  knowledge  of 
these  facts,  but  fails  to  assert  his  right ;  shall  he  afterwards  be  permitted  to 
assert  it  with  effect?  Is  not  this  such  evidence  of  acquiescence  in  the  public 
use,  on  his  part,  as  justly  forfeits  his  right? 

If  an  individual  witness  a  sale  and  transfer  of  real  estate,  under  certain 
circumstances,  in  which  he  has  an  equitable  lien  or  interest,  and  does  not  make 
known  this  interest,  he  shall  not  afterwards  be  permitted  to  assert  it.  On 
this  principle  it  is,  that  a  discoverer  abandons  his  right,  if,  before  the  obtain- 
ment  of  his  patent,  his  discovery  goes  into  public  use.  His  right  would  be 
secured  by  giving  public  notice  that  he  was  the  inventor  of  the  thing  used, 
and  that  he  should  apply  for  a  patent.  Does  this  impose  any  thing  more 
than  reasonable  diligence  on  the  inventor?  And  would  any  thing  short  of 
this  be  just  to  the  public?  The  acquiescence  of  an  inventor  in  the  public 
use  of  an  invention,  can  in  no  case  be  presumed,  when  he  has  no  knowledge 
of  such  vise.  But  this  knowledge  may  be  presumed  from  the  circumstances 
of  the  case.  This  will,  in  general,  be  a  fact  for  the  jury.  And  if  the 
inventor  do  not,  immediately  after  this  notice,  assert  his  right,  it  is  such 
evidence  of  acquiescence  in  the  public  use,  as  forever  afterwards  to  prevent 
him  from  asserting  it.  After  his  right  shall  be  perfected  by  a  patent,  no 
presumption  arises  against  it  from  a  subsequent  use  by  the  public. 

When  an  inventor  applies  to  the  department  of  state  for  a  patent,  he 
should  state  the  facts  truly  ;  and  indeed  he  is  required  to  do  so,  under  the 
solemn  obligations  of  an  oath.  If  his  invention  has  been  carried  into  public 
use  by  fraud  ;  but  for  a  series  of  months  or  years,  he  has  taken  no  steps  to 
assert  his  right ;  would  not  this  afford  such  evidence  of  acquiescence  as  to 
defeat  his  application,  as  effectually  as  if  he  failed  to  state  that  he  was  the 
original  inventor.  And  the  same  evidence  which  should  defeat  his  applica- 
tion for  a  patent,  would,  at  any  subsequent  period,  be  fatal  to  his  right. 
The  evidence  he  exhibits  to  the  department  of  state  is  not  only  ex  parte, 
but  interested  ;  and  the  questions  of  fact  are  left  open,  to  be  controverted  by 
any  one  who  shall  think  proper  to  contest  the  right  under  the  patent. 

A  strict  construction  of  the  act,  as  it  regards  the  public  use  of  an  inven- 


344  LAW    OF     PATENTS. 

inventor  in  the  public  use,  and  not  his  voluntarily  imparting  the 
knowledge  to  the  person  who  fraudulently  or  otherwise  uses  it 
in  public,  that' fastens  upon  him  the  presumption  of  a  dedica- 
tion.^ It  is  also  clear,  that  when  the  act  or  acts  of  user  were  by 
way  of  experiment,  in  order  to  perfect  the  invention,  the  inven- 
tor does  not  lose  his  right. 

■§.303.  Hence  it  appears,  that  the  fntention  with  which  the 
inventor  did  the  acts  which  are  relied  on  as  proof  of  "  public 
use"  is  material,  unless  the  evidence  goes  to  the  extent  of 
showing,  that  the  invention  had  got  beyond  the  control  of  the 
inventor,  and  he  had  not  taken  any  steps  to  prevent  its  being 
thus  situated.  In  other  words,  it  may  be  a  material  element, 
in  determining  whether  the  presumption  of  acquiescence  in 
public  use  arises,  to  ascertain  whether  the  inventor  used  the 
invention  himself,  or  imparted  a  knowledge  of  it  to  others,  with 
or  without  an  intention  to  limit  such  use  or  knowledge,  in 
respect  to  time,  extent,  or  object. 

<§,  304.  Where  a  party  practises  his  invention  himself,  for  the 
purposes  of  experiment  or  completion  before  he  takes  out  a 
patent,  the  inference  that  he  intends  to  surrender  his  invention 
to  the  public  does  not  arise  ;  and  consequently  a  dedication  can- 
not be  proved  by  evidence  that  shows  only  experimental  prac- 
tice by  the  inventor,  whether  in  public  or  in  private.^     Indeed, 


tion,  before  it  is  patented,  is  not  only  required  by  its  letter  and  spirit,  but 
also  by  sound  policy.  A  term  of  fourteen  years  was  deemed  sufficient  for 
the  enjoyment  of  an  exclusive  right  of  an  invention  by  the  inventor.  But  if 
he  may  delay  an  application  for  his  patent,  at  pleasure,  although  his  inven- 
tion be  carried  into  public  use,  he  may  extend  the  period  beyond  what  the 
law  intended  to  give  him.  A  pretence  of  fraud  would  afford  no  adequate 
security  to  the  public  in  this  respect,  as  artifice  might  be  used  to  cover  the 
transaction.  The  doctrine  of  presumed  acquiescence,  where  the  public  use 
is  known,  or  might  be  known  to  the  inventor,  is  the  only  safe  rule  which  can 
be  adopted  on  this  subject."     7  Peters,  319,  320,  321,  322. 

'  2  Peters,  1,  23. 

*  Wyeth  V.   Stone,  1   Story's  T^..   271,  280.     In  this  case  Mr.  Justice 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    345 

it  may  be  stated,  as  a  general  test,  in  cases  of  a  sup- 
posed dedication  through  the  using,  exercising,  or  practising 
the  invention  by  the  patentee  himself,  previous  to  his  applica- 
tion for  a  patent,  that  whenever  the  evidence  stops  short  of 
proving  such  a  use,  exercise,  or  practice  for  the  purpose  of  gain, 
a  "  public  use  "  will  not  be  proved.^ 


Story  said,  *'  In  the  next  place,  as  to  the  supposed  public  use  of  Wyeth's 
machine  before  his  application  for  a  patent.  To  defeat  his  right  to  a  patent, 
under  such  circumstances,  it  is  essential  that  there  should  have  been  a  public 
use  of  his  machine,  substantially  as  it  was  patented,  with  his  consent.  If  it 
was  merely  used  occasionally  by  himself  in  trying  experiments,  or  if  he 
allowed  only  a  temporary  use  thereof  by  a  few  persons,  as  an  act  of  personal 
accommodation  or  neighborly  kindness,  for  a  short  and  limited  period,  that 
would  not  take  away  his  right  to  a  patent.  To  produce  such  an  effect,  the 
public  use  must  be  either  generally  allowed  or  acquiesced  in,  or  at  least  be 
unlimited  in  time,  or  extent,  or  object.  On  the  other  hand,  if  the  user  were 
without  Wyeth's  consent,  and  adverse  to  his  patent,  it  was  a  clear  violation 
of  his  rights,  and  could  not  deprive  him  of  his  patent." 

See  also  Ryan  v.  Goodwin,  3  Sumner,  518  ;  Bentley  v.  Fleming,  1  Car. 
&  Kirw.  587.  This  last  case  shows  a  strong  tendency  to  limit  the  effect  of 
use  in  public,  by  the  intention  of  the  patentee.  The  patent  in  question  had 
been  obtained  for  making  a  card  machine;  and  there  was  evidence,  that 
about  five  or  six  weeks  before  the  letters-patent  were  obtained,  the  inventor, 
one  Thornton,  had  lent  the  machine  to  one  N.,  in  order  that  he  might  try 
whether  it  would  set  the  teeth  of  the  cards.  There  was  also  evidence  that 
N's  room  was  in  a  mill,  and  that  men  were  constantly  going  backwards  and 
forwards,  to  and  from  the  said  room.  It  appeared,  moreover,  that  for  some 
weeks  before  the  time  at  which  the  machine  was  lent  to  N.,  it  had  been  in 
complete  working  condition.  On  this  evidence  it  was  submitted,  on  the 
part  of  the  defendant,  that  the  plaintiff  was  out  of  court  — first,  on  the 
ground  that  the  machine  had  been  publicly  used  in  N's  room,  which  was  a 
public  room,  before  the  granting  of  the  letters-patent ;  and  on  this  point  the 
case  of  Wood  v.  Zimmer  was  referred  to.  Cresswell,  J.  said,  "  Have  you 
any  case  that  goes  that  length  ?  The  case  referred  to  was  the  case  of  an 
absolute  sale  ;  but  here  there  is  no  evidence  that  the  machine  was  given  to 
N./or  the  purpose  of  giving  it  publicity.  The  evidence  merely  is,  that 
Thornton  lent  the  machine  to  N.  in  order  that  he  might  discover  whether  it 
really  was  worth  while  to  take  out  a  patent  for  it  or  not,  I  cannot  stop  the 
case  on  that  point." 
'  Post,  ^305,  note. 


346  LAW    OF    PATENTS. 

^  305.  It  has  been  held  in  England,  where  the  "  public  use" 
must  be  a  public  use  in  England,  that  the  making  in  England 
of  a  single  pair  of  vviieels,  the  subject  of  the  patent,  under  the 
directionof  the  patentee,  but  under  an  injunction  of  secresy, 
to  be  sent  abroad  for  a  person  who  intended  to  take  a  share  in 
the  patent,  was  not  a  public  use  within  the  realm. ^     But  as  our 


'  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  189,  193.  In  this  case,  Parke,  B. 
said,  "  The  evidence  was  that  before  the  date  of  the  patent,  (which  was  the 
22d  of  July,  1829,)  Curtis,  an  engineer,  made  for  Morgan  two  pairs  of 
wheels  upon  the  principle  mentioned  in  the  patent  at  his  own  factory.  Gal- 
loway, the  patentee,  gave  the  instructions  to  Curtis  under  an  injunction  of 
secrecy,  because  he  was  about  to  take  out  a  patent.  The  wheels  were  com- 
pleted and  put  together  at  Curtis's  factory,  but  not  shown  or  exposed  to  the 
view  of  those  who  might  happen  to  come  there.  After  remaining  a  short 
time,  the  wheels  were  taken  to  pieces,  packed  up  in  cases,  and  shipped  in 
the  month  of  April  on  board  a  vessel  in  the  Thames,  and  sent  for  the  use  of 
the  Venice  and  Trieste  Company,  of  which  Morgan  was  managing  director, 
and  which  carried  on  its  transactions  abroad,  but  had  shareholders  in  Eng- 
land. Curtis  deposed,  that  "  they  were  sold  to  the  company,"  without  say- 
ing by  whom,  which  may  mean  that  they  were  sold  by  Curtis  to  Morgan 
for  the  company  ;  and  Morgan  paid  Curtis  for  them.  Morgan  and  Galloway 
employed  an  attorney,  who  entered  a  caveat  against  any  patent  on  the  second 
of  March,  and  afterwards  solicited  the  patent  in  question,  which  was  granted 
to  Galloway  and  assigned  to  Morgan.  Upon  these  facts,  the  question  for  us 
to  decide  is,  whether  the  jury  must  have  necessarily  found  for  the  defendants, 
or  whether  they  might  have  found  that  this  invention,  at  the  date  of  the  let- 
ters-patent, was  new  in  the  legal  sense  of  that  word.  The  words  of  the 
statute  are,  that  grants  are  to  be  good  "  of  the  sole  working  or  making  of 
any  manner  of  new  manufactures  within  this  realm,  to  the  first  and  true 
inventor  or  inventors  of  such  manufactures,  which  others  at  the  time  of  the 
making  of  such  letters-patent  and  grants  did  not  use;  "  and  the  proviso  ia 
the  patent  in  question,  founded  on  the  statute,  is,  that  if  the  invention  be 
not  a  new  invention  as  to  the  public  use  and  exercise  thereof  in  England, 
the  patent  should  be  void.  The  word  "manufacture"  in  the  statute  must, 
be  construed  in  one  of  two  ways  ;  it  may  mean  the  machine  when  completed, 
or  the  mode  of  constructing  the  machine.  If  it  mean  the  former,  undoubtedly 
there  has  been  no  use  of  the  machine,  as  a  machine,  in  England,  either  by 
the  patentee  himself  or  any  other  person  ;  nor  indeed  any  use  of  the  machine 
in  a  foreign  country  before  the  date  of  the  patent.  If  the  term  "  manufac- 
mre  "  be  construed  to  be  "the  mode  of  constructing  the  machine,"  there 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    347 

law  stood  before  the  year  1839,  if  the  inventor  sold  to  any  one 
who  might  choose  to  buy,  although  it  was  only  a  single  speci- 


has  been  no  use  or  exercise  of  it  in  England,  in  any  sense  which  can  be 
called  "public."  The  wheels  were  constructed  under  the  direction  of  the 
inventor,  by  an  engineer  and  his  servants,  with  an  injunction  of  secresy,  on 
the  express  ground  that  the  inventor  was  about  to  take  out  a  patent,  and 
that  injunction  was  observed ;  and  this  makes  the  case,  so  far,  the  same  as 
if  they  had  been  constructed  by  the  inventor's  own  hands,  in  his  own  private 
workshop,  and  no  third  person  had  seen  them  whilst  in  progress.  The 
operation  was  disclosed,  indeed,  to  the  plaintiff,  Morgan,  but  there  is  suffi- 
cient evidence  that  Morgan,  at  that  time,  was  connected  with  the  in\enlor, 
and  designing  to  lake  a  share  of  the  patent.  A  disclosure  of  the  nature  of 
the  invention  to  such  a  person,  under  such  circumstances,  must  surely  be 
deemed  private  and  confidential.  The  only  remaining  circumstance  is,  that 
Morgan  paid  for  the  machines,  with  the  privity  of  Galloway,  on  behalf  (»f 
the  Venice  and  Trieste  Steam  Company,  of  which  he  was  the  managing 
director;  but  there  was  no  proof  that  he  had  paid  more  than  the  price  of  the 
machines,  as  for  ordinary  work  of  that  description  ;  and  ihe  jury  would  also 
be  well  warranted  in  finding,  that  he  did  so  with  the  intention  that  the 
machine  should  be  used  abroad  only,  by  this  company,  which,  as  it  carried 
on  its  transactions  in  a  foreign  country,  may  be  considered  as  a  foreign  com- 
pany ;  and  the  question  is,  whether  this  solitary  transaction,  without  any, 
gain  being  proved  to  be  derived  thereby  to  the  patentee  or  to  the  plaintiff, 
be  a  use  or  exercise  in  England,  of  the  mode  of  construction,  in  any  sense 
which  can  be  deemed  a  use  by  others,  or  a  public  use,  within  the  meaning 
of  the  statute  and  the  patent.  We  think  not.  It  must  be  admitted,  that  if 
the  patentee  himself  had  before  his  patent  constructed  machines  for  sale  as 
an  article  of  commerce,  for  gain  to  himself,  and  been  in  the  practice  of  sell- 
ing them  publicly,  that  is,  to  any  one  of  the  public  who  would  buy,  the 
invention  would  not  be  new  at  the  date  of  the  patent.  This  was  laid  down 
in  the  case  of  Wood  v.  Zimmer  (Holt,  N.  P.  C.  58,  and  Webs.  Pat.  Cas. 
44,  n.)  and  appears  to  be  founded  on  reason;  for  if  the  inventor  could  sell 
his  invention,  keeping  the  secret  to  himself,  and  when  it  was  likely  to  be 
discovered  by  another  take  out  a  patent,  he  might  have,  practically,  a  monop- 
oly for  a  much  longer  period  than  fourteen  years.  Nor  are  we  prepared  to 
say,  that  if  such  a  sale  was  of  articles  that  were  only  fit  for  a  foreign  market, 
or  to  be  used  abroad,  it  would  make  any  difference  ;  nor  that  a  single  instance 
of  such  a  sale  as  an  article  of  commerce,  to  any  one  who  chose  to  buy, 
might  not  be  deemed  the  commencement  of  such  a  practice,  and  the  public 
use  of  the  invention,  so  as  to  defeat  the  patent.  But  we  do  not  think  that 
the  patent  is  vacated  on  the  ground  of  the  want  of  novelty,  and  the  previous 


348  LAW    OF    PATENTS. 

men  of  his  invention,  and  sold  for  profit  on  it  as  an  invention, 
such  a  sale  would  be  a  "public  use,"  and  the  unlimited  nature 
of  the  object  with  which  a  knowledge  of  the  invention  was 
imparted,  would  prevent  him  from  resuming  his  exclusive  right 
by  a  subsequent  patent.^  It  will  presently  be  stated,  how  far 
the  law  has  been  modified  in  this  respect. 

<^  306.  Another  limitation  to  the  doctrine  of  presumptive 
dedication,  or  public  use,  with  the  consent,  (fcc,  is  found  in  the 
case  of  a  piratical  user  of  the  invention,  by  a  party  to  whom  the 
inventor  has  imparted  a  knowledge  of  it  in  confidence,  before 
he  has  applied  for  a  patent.  Many  inventions  can  be  perfected 
and  carried  into  practice  only  through  the  aid  of  workmen,  ser- 
vants, and  other  employees.  We  have  seen  that  an  inventor 
may  entrust  another  person,  confidentially,  with  a  knowledge  of 
his  invention,  for  certain  limited  purposes  ;  and  if  such  a  person 
afterwards  fraudulently  makes  public  the  knowledge  so  acquired, 
the  authorities  seem  to  be  agreed,  that  the  inventor  may,  if  he 
takes  immediate  steps  to  give  notice  of  his  exclusive  right,  obtain 
a   valid    patent.^     The    words    of  the    statute,  describing  the 

public  use  or  exercise  of  it,  by  a  single  instance  of  a  transaction  such  as  this 
between  the  parties,  connected  as  Galloway  and  the  plaintiff  are,  which  is 
not  like  the  case  of  a  sale  to  any  individual  of  the  public  who  might  wish  to 
buy  ;  in  which  it  does  not  appear  that  the  patentee  has  sold  the  article,  or  is 
to  derive  any  profit  from  the  construction  of  his  machine,  nor  that  Morgan 
himself  is ;  and  in  which  the  pecuniary  payment  may  be  referred  merely  to 
an  ordinary  compensation  for  the  labor  and  skill  of  the  engineer  actually 
employed  in  constructing  the  machine  ;  and  the  transaction  might,  upon  the 
evidence,  be  no  more  in  effect,  than  that  Galloway's  own  servants  had  made 
the  wheels  ;  that  Morgan  had  paid  them  for  the  labor,  and  afterwards  sent 
the  wheels  to  be  used  by  his  own  co-partners  abroad.  To  hold  this  to  be 
what  is  usually  called  a  publication  of  the  invention  in  England,  would  be 
to  defeat  a  patent  by  much  slighter  circumstances  than  have  yet  been  per- 
mitted to  have  that  effect." 

'  lUd.;  Wood  V.  Zimmer,  1  Holt,  N.  P.  C.  60. 

^  Pennock  v.  Dialogue,  2  Peters,  1 ;  Shaw  v.  Cooper,  7  Peters,  292  ;  Mel- 
ius v.  Silsbee,  Grant  v.  Raymond,  6  Peters,  248,  249;  McClurg  v.  Kings- 
land,  1  Howard,  202,  207. 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LA)|.    349 

defence  now  under  consideration,  make  it  clear,  that,  if  the 
invention  has  come  into  pubUc  use  through  a  breach  of  confi- 
dence, it  cannot  be  said  to  be  in  pubUc  use  "  with  the  consent 
or  allowance  "   of  the  patentee ;    it  is  only  when  he  has  been 
silent  after  it  has  so  become  public,  that  the  presumption  of  con- 
sent and  allowance  arises.^     The  Act  of  1839,  as  will  appear 
hereafter,  has  made  this  point  still  more  clear.    Another  instance 
of  a  use,  which  will  not  expose  the  patentee  to  the  consequences 
of  this  defence,  is  that  suggested  on  more  than  one  occasion,  by 
Mr.  Justice  Story,  where  the  use  has  been  permitted  to  others, 
for  other  limited  purposes  than  those  of  experiment  or  comple- 
tion, as    from  motives  of  neighborly   kindness  and  the    like.- 
The  test  that  is  afforded  by  the  case  of  INIorgan  v.  Seaward, 
above  cited,  is  applicable  here  also  ;  namely,  that  the  evidence 
excludes  the  supposition  that  the  patentee  had  put  the    thing 
into  public  use,  for  the  purpose  of  profit  on  it,  as  an  invention.^ 
If  a  patentee  could  show  clearly  that  he  had  allowed  to  others 
a  limited  use  of  his  invention,  not  for  his  own  profit,  but  for 
their  accommodation,  in  a  manner  consistent  with  a  clear  inten- 
tion to  hold  the  exclusive  privilege,  and   the  invention  had  not 
got  beyond    his  control,  with  his  apparent   acquiescence,    he 
would  not  be  within  the  mischief  of  this  part  of  the  statute.    Of 
course,  mere  delay  to  take  out  a  patent,  unaccompanied  by  pub- 
lic use  or  sale  of  the  thing,  with  the  consent  or  allowance  of  the 
patentee,  before  his  application,  however  long  may  be  the  inter- 
val  between  the  completion  of  the  thing  and  the  application, 
will  have  no  effect  upon  the  patent."*     Mere  delay  has  no  otiier 


'  Ryan  v.  Goodwin,  3  Sumner,  513  ;  Pierson  v.  The  Eagle  Screw  Com- 
pany, 3  Story's  R.  406,  407,  408. 

«  Melius  V.  Silsbee,  4  Mas.  Ill ;  Wyeth  v.  Stone,  1  Story's  R.  280,  281  ; 
Ryan  v.  Goodwin,  3  Sumner,  518. 

*  Cited  ante. 

*  Ryan  v.  Goodwin,  3  Sumner,  519.  In  the  case  of  Bentjey  v.  Fleming, 
1  Car.  &  Kirw.  587,  588,  it  was  contended  that,  inasmuch  as  the  machine 
in  question  was  a  complete  workable  machine  for  a  long  period  before  the 
letters-patent  were  taken  out,  it  did  not  form  the  subject  of  a  patent  at  all. 

30 


;J50  LAW    OF    PATENTS. 

importance,  than  as  it  tends  to  show  acquiescence  in  such  pub- 
He  use  as  may  have  occurred,  in  the  meantime  ;  or  to  show  that 
the  acts  of  the  inventor  went  beyond  a  use  or  permission  to  use, 
for  the  purpose  of  experiment,  or  other  hmited  object. 

<§,  307.  It  now  remains  to  be  stated,  how  far  this  defence  of  a 
"  prior  public  use  or  sale  with  the  consent  or  allowance  "  of  the 
patentee  has  been  restricted  or  modified  by  subsequent  legisla- 
tion. Under  this  clause  of  the  Act  of  1836,  a  use  of  the  inven- 
tion by  a  single  person,  or  a  sale  of  the  thing  invented  to  a  single 
person,  might,  as  we  have  seen,  amount  to  a  public  use  or  sale, 
with  the  consent  or  allowance  of  the  patentee.  To  remedy  the 
inconvenience  arising  from  this  operation  of  the  law,  the  Act  of 
1839,  -^  7,  provided  "  that  every  person  or  corporation,  who  has, 
or  shall  have  purchased  or  constructed  any  newly-invented 
machine,  manufacture,  or  composition  of  matter,  prior  to  the 
application,  by  the  inventor  or  discoverer,  for  a  patent,  shall  be 
held  to  possess  the  right  to  use,  and  vend  to  others  to  be  used, 
the  specific  machine,  manufacture,  or  composition  of  matter,  so 
made  or  purchased,  without  liability  therefor  to  the  inventor,  or 
any  other  person  interested  in  such  invention  ;  and  no  patent 
shall  be  held  to  be  invalid,  by  reason  of  such  purchase,  sale,  or 
use,  prior  to  the  application  for  a  patent  as  aforesaid,  except  on 
proof  of  abandonment  of  such  invention  to  the  public  ;  or  that 
such  purchase,  sale,  or  prior  use,  has  been  for  more  than  two 
years  prior  to  such  application  for  a  patent." 

<^  308.  This  enactment  enables  a  patentee  to  permit  the  use 
of  his  invention,  by  individuals,  before  his  application,  with 
more  safety  than  he  formerly  could.     Such  use  is  not  to  invali- 


Cresswell,  J.  —  "  A  man  cannot  enjoy  his  monopoly  by  procuring  a  patent, 
after  having  had  the  benefit  of  the  sale  of  his  invention.  But  you  cannot 
contend,  that  if  a  man  were  to  keep  his  invention  shut  up  in  his  room  for 
twenty  years,  that  circumstance  merely  would  deprive  him  of  his  right  to 
obtain  a  patent  for  it." 


REMEDY  FOR  INFRINGEMENT  BV  ACTION  AT  LAW.    351 

(late  the  patent,  except  on  proof  of  abandonment  of  the  inven- 
tion to  the  public,  or  thai  it  had  been  continued  for  more  than 
two  years  prior  to  the  application  for  a  patent.  The  question 
arises  upon  this  provision,  then,  whether  the  particular  purchase, 
sale,  or  prior  use,  may  of  itself,  under  some  circumstances,  fur- 
nish proof  of  abandonment  to  tiie  public,  or  whether  such  an 
abandonment  must  be  proved  by  other  cases,  and  by  other  evi- 
dence dehors  the  particular  purchase,  sale,  or  prior  use,  that 
happens  to  be  in  question.  The  obvious  construction  of  the  act 
is,  that  a  purchase,  sale,  or  prior  use,  before  the  application  for  a 
patent,  shall  not  invalidate  it,  unless  it  amounts  to  an  abandon- 
ment to  the  public  ;  a  purchase,  sale,  or  prior  use,  shall  not  have 
this  effect,  per  se,  but  if  connected  with  facts  which  show  an 
abandonment  to  tiie  public,  or  if  it  has  been  for  more  than  two 
years  prior  to  the  application,  it  will  have  this  effect.^  Thus,  in 
the  case  of  McClurg  v.  Kingsland,  where  the  defendants  used 
the  invention  for  four  months  before  the  application  of  the 
inventor  for  a  patent,  such  use  being  in  public,  with  llie  consent 
and  allowance  of  the  patentee,  he  being  in  their  employ,  and 
making  a  part  of  the  apparatus,  by  which  the  invention  was  to 
be  applied,  but  receiving  no  compensation  for  the  use  of  his 
invention,  and  not  giving  any  notice  to  the  defendants  not  to 
use  his  invention,  until,  on  a  misunderstanding  upon  another 
subject,  he  left  their  employment ;  the  Supreme  Court  of  the 
United  States  said  that  it  would  be  no  strained  construction, 
under  such  circumstances,  to  hold  that  the  patent,  subsequently 
obtained,  was  void ;  although  the  decision  merely  went  to  the 
point  that  the  acts  of  the  patentee  justified  the  presumption  of 
a  license  to  the  defendants.- 

*§>  309.  The  words  of  the  statute  which  thus  authorizes  a  pub- 
lic use  or  sale  by,  or  to  individuals,  prior  to  the  application  for  a 


'  See  the  comment  of  Mr.  Justice  Story,  on  this  statute,  in  Pierson  v.  The 
Eagle  Screw  Company,  3  Story's  R.  402,  405,  407,  cited  ante. 
*  1  Howard,  202,  208. 


.'BS'S  I' AW    OF    PATENTS. 

patent,  make  the  subject  of  such  use  or  sale,  "any  newly 
invented  machine,  manufacture,  or  composition  of  matter;" 
and  the  purchaser  is  authorized  to  use,  and  vend  to  others  to  be 
used,  "  the  specific  machine,  manufacture,  or  composition  of 
matter,"  without  liability  to  the  inventor,  he.  ;  and  then  the 
statute  declares,  that  the  patent  shall  still  be  valid,  notwithstand- 
ing such  prior  use  or  sale,  except  on  proof  of  the  abandonment 
of  "  such  invention  "  to  the  public,  he.  It  might  admit  of 
some  doubt,  upon  this  language,  whether  the  invention  of  a 
method  of  manufacture,  a  process,  or  an  art,  or  any  thing  but  a 
machine,  a  manufacture,  or  a  composition  of  matter,  is  within 
the  scope  of  the  provision,  and  whether  the  purchaser  could  do 
any  thing  more  than  use  or  vend  to  others  to  be  used  the  spe- 
cific thing  which  he  had  purchased.  But  the  Supreme  Court  of 
the  United  States  have  construed  the  terms  "  newly  invented 
machine,  manufacture,  or  composition  of  matter"  to  mean  "  the 
invention  patented,"  whatever  it  may  be  ;  and  the  words  "  the 
specific  machine,"  to  refer  to  the  thing  as  originally  invented,  of 
which  the  right  is  afterwards  secured  by  a  patent ;  so  that 
according  to  the  precedent  afforded  by  the  case  in  which  this 
construction  was  adopted,  this  statute  embraces  whatever  may 
be  the  subject-matter  of  a  valid  patent,  although  it  may  be  a 
process,  or  method  of  manufacture,  and  not  a  machine,  &;c.^ 


'  McCIurg  V.  Kingsland,  1  Howard,  202,  209.  The  court  said  :  "  At  the 
trial  below  and  here,  the  plaintiff's  counsel  have  contended,  that  this  act  can- 
not apply  to  the  present  case,  inasmuch  as  the  protection  it  affords  to  the  per- 
son who  had  the  prior  use,  is  confined  to  the  specific  machine,  &c.,  and  does 
not  extend  to  such  use  of  the  invention,  or  thing  patented,  if  it  does  not  con- 
sist of  a  machine,  &c.,  as  contradistinguished  from  the  new  mode  or  manner 
in  which  an  old  machine  or  its  parts  operates,  so  as  to  produce  the  desired 
effect;  but  we  think  that  the  law  does  not  admit  of  such  construction, 
whether  we  look  at  its  words  or  its  manifest  objects,  when  taken  in  connec- 
tion with  former  laws,  and  the  decisions  of  this  court  in  analogous  cases. 

"  The  words  '  such  invention  '  must  be  referred  back  to  the  preceding  part 
of  the  sentence,  in  order  to  ascertain  the  subject-matter  to  which  it  relates, 
which  is  none  other  than  the  newly-invented  machine,  manufacture,  or  com- 
position of  matter  constituting  the  thing  patented,  otherwise  these  words 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    353 

<§,310.  The  result,  therefore,  of  the  diiferent  statute  provi- 
sions and  the  authorities,  is,  that  this  defence  of  a  prior  public 


become  senseless  when  the  invention  is  not  strictly  of  a  machine,  &c.  Now, 
in  the  present  case,  we  find  the  invention  consists  solely  in  the  angular 
direction  given  to  the  tube  through  which  the  metal  is  conducted  into  the  cyl- 
inder in  which  the  roller  is  cast.  Every  part  of  the  machinery  is  old,  the 
roller  itself  is  no  part  of  the  invention,  and  cannot  be  the  machine,  manufac- 
ture, or  composition  of  matter  contemplated  by  Congress,  nor  can  the  word 
'  specific  '  have  any  practical  effect,  unless  it  is  applied  to  the  thing  patented, 
whatever  it  may  be,  without  making  a  distinction  between  a  machine,  &c., 
and  the  mode  of  producing  a  useful  result,  by  the  mere  direction  given  to  one 
of  the  parts  of  an  old  machine.  Such  a  construction  is  not  justified  by  the 
language  of  the  law,  and  would  defeat  both  of  its  objects.  If  it  does  not 
embrace  the  case  before  us,  the  consequence  would  be  that  the  use  of  the 
invention,  under  the  circumstances  in  evidence,  would,  according  to  the  deci- 
sion in  2  Peters,  14,  15,  invalidate  the  patent ;  for  if  the  act  operates  to  save 
the  avoidance  of  the  patent,  it  must,  of  consequence,  protect  the  person  who 
uses  the  invention  before  the  application  for  a  patent.  Both  objects  mvjst  be 
effected,  or  both  must  fail,  as  both  parts  of  the  act  refer  to  the  same  thing, 
and  the  same  state  of  things,  as  affecting  the  person  using  the  newly-invented 
machine,  or  the  thing  patented,  as  well  as  the  inventor.  Had  the  words 
'  invention,'  or  'thing  patented,'  been  used  instead  of  machine,  &c.,  there 
could  have  been  no  room  for  doubt  of  the  application  of  the  act  to  the  pre- 
sent case  ;  and,  by  referring.to  the  phraseology  of  the  different  acts  of  Con- 
gress, denoting  the  invention,  it  is  apparent  that,  though  there  is  a  difference 
in  the  words  used,  there  is  none  as  to  their  meaning  or  reference  to  the  same 
thing.  Thus,  we  find  in  the  fourteenth  section  of  the  Act  of  1836,  relating 
to  suits  for  using  '  the  thing  whereof  the  exclusive  right  is  secured  by  any 
patent ; '  in  the  fifteenth,  '  his  invention,  his  discovery,  the  thing  patented.' 
'  that  which  was  in  fact  invented  or  discovered,'  '  the  invention  or  discovery 
for  which  the  patent  issued,'  '  that  of  which  he  was  the  first  inventor.'  In 
the  first  section  of  the  Act  of  1839,  '  any  patent  for  any  invention,  discovery, 
or  improvement,'  '  inventions  and  discoveries  ; '  in  the  second  section,  '  the 
invention  ; '  in  the  third,  '  invention  or  discovery  ;  '  in  the  fourth,  '  patented 
inventions  and  improvements ;  '  in  the  fifth,  '  the  thing  as  originally 
invented.'     2  Story,  2510,  2511,  2546. 

"  We  therefore  feel  bound  to  take  the  words  *  newly-invented  machine, 
manufacture,  or  composition  of  matter,'  and  '  such  invention,'  in  the  Act  of 
1839,  to  mean  '  the  invention  patented,'  and  the  words  '  specific  machine,'  to 
refer  to  '  the  thing  as  originally  invented,'  whereof  the  right  is  secured  by 
patent ;  but  not  to  any  newly-invented  improvement  on  a  thing  once  patented. 

30* 


354  I-AW    OF    PATENTS. 

use  or  sale,  with  the  consent  or  allowance  of  the  patentee,  can 
now  be  made  good  so  as  to  invalidate  a  patent,  only  by  showing 
an  abandonment  to  the  public,  or  that  the  use  or  sale  dates  from 
a  period  more  than  two  years  before  the  application  for  a  patent ; 
that  such  an  abandonment  will  not  be  proved  by  the  particular 
act  of  use  or  sale  alone,  but  that  the  act  of  use  or  sale  may  be 
attended  with  such  circumstances  as  to  amount  to  an  abandon- 
ment ;  and  that  the  abandonment  may  also  be  proved  by  other 
acts  or  omissions  disconnected  with  the  particular  use  or  sale, 
which  the  patentee  may  have  allowed  to  individuals,  and  which 
he  can  show  did  not  alone  amount  to  an  abandonment.^ 

>§>311.  The  next  special  defence  stated  in  the  act  of  1836, 
is,  "  that  the  patentee  had  surreptitiously  or  unjusdy  obtained 
the  patent  for  that  which  was  in  fact  invented  or  discovered  by 
another,  who  was  using  reasonable  diligence  in  adapting  and 
perfecting  the  same."  This  provision  was  intended  to  embrace 
the  case  of  a  patent  being  obtained  fraudulently,  when  the  party 
obtaining  it  was  not  the  inventor,  and  also  the  case  of  two  inde- 
pendent inventors,  where  the  one  makes  his  application  before 
the  other,  who  was  the  first  inventor,  and  so  obtains  a  patent  for 
that  which  was  previously  invented  by  another. 

<§.312.  With  regard  to  the  first  case,  of  a  patent  obtained  by 
a  person  not  the  inventor,  by  a  fraud  on  the  rights  of  the  real 
inventor,  it  is  sufficient  to  observe  that  such  a  defence,  if  made 


The  use  of  the  invention  before  an  application  for  a  patent  must  be  the  spe- 
cific improvement  then  invented  and  used  by  the  person  who  had  purchased, 
constructed,  or  used  the  machine  to  which  the  invention  is  applied ;  so  con- 
strued, the  objects  of  the  Act  of  1839  are  accomplished  ;  a  different  construc- 
tion would  make  it  necessary  to  carry  into  all  former  laws  the  same  literal 
exposition  of  the  various  terms  used  to  express  the  same  thing,  and  thereby 
changing  the  law  according  to  every  change  of  mere  phraseology,  make  it  a 
labyrinth  of  inextricable  confusion." 

'  As  to  an  abandonment  or  dedication  after  the  patent  has  been  obtained, 
see  the  case  Wyelh  v.  Stone,  1  Story's  R.  73. 


REMEDY  FOR  INFRINGEMENT  BY  ACTION  AT  LAW.    355 

out,  would  be  a  complete  bar  to  the  action,  up6n  general  princi- 
ples, as  well  as  upon  other  provisions  of  the  statute.  One  of  the 
modes  in  which  a  patent  may  be  thus  surreptitiously  obtained,  is 
by  obtaining  a  knowledge  of  the  invention  from  the  public  records 
where  the  inventor  has  deposited  a  description  of  it.  When 
the  real  inventor  has  filed  such  a  description  at  the  patent  office, 
or  has  obtained  a  patent,  he  has  given  notice  to  every  subse- 
quent applicant  for  a  patent  for  the  same  thing,  of  the  fact  that 
he  invented  it ;  and  although  others  may  not  afterwards  be  able 
to  oflTer  direct  evidence  that  a  subsequent  patentee  had  seen  and 
pirated  the  machine  or  other  thing  invented  by  the  former  appli- 
cant or  patentee,  yet  the  jury  may  infer  a  piracy  from  the  exist- 
ence of  the  former  record,  of  which  every  subsequent  patentee 
is  presumed  to  have  knowledge.^  As  to  the  case  of  two  inde- 
pendent inventors,  one  of  whom  makes  an  earlier  application 
than  another  for  a  patent  and  succeeds  in  obtaining  it,  it  will  be 
a  good  defence  to  an  action  upon  such  a  patent,  if  it  can  be 
shown  that  the  same  thing  was  first  invented  by  another, 
although  not  actually  perfected,  provided  the  first  inventor  was 
at  the  time  using  reasonable  diligence  in  adapting  and  perfecting 
the  thing  invented.^ 


'  Odiorne  v.  Winkley,  2  Gallis.  51,  55.  In  this  case,  Mr.  Justice  Story 
said,  "  As  to  the  question,  whether  the  patent  was  surreptitiously  obtained, 
there  is  no  direct  or  positive  proof,  that  Reed  had  ever  seen  Perkins's  ma- 
chine before  he  obtained  a  patent,  hut  there  is  evidence,  from  which  the  jury 
may  legally  infer  the  fact,  if  they  believe  that  evidence.  It  is  a  presump- 
tion of  law,  that  when  a  patent  has  been  obtained,  and  the  specifications  and 
drawings  recorded  in  the  patent  office,  every  man  who  subsequently  takes 
out  a  patent  for  a  similar  machine,  has  a  knowledge  of  the  preceding  patent. 
As  in  chancery  it  is  a  maxim,  that  every  man  is  presumed  to  have  notice  of 
any  fact,  upon  which  he  is  put  upon  inquiry  by  documents  within  his  posses- 
sion, if  such  fact  could,  by  ordinary  diligence,  be  discovered  upon  such 
inquiry.  It  is  also  a  presumption  of  fact,  that  every  man,  having  within  his 
power  the  exact  means  of  information,  and  desirous  of  securing  to  himself 
the  benefit  of  a  patent,  will  ascertain  for  his  own  interest,  whether  any  one 
on  the  public  records  has  acquired  a  prior  right." 

2  Reed  v.  Cutter,  1  Story's  R.  590,  599.     In  this  case  Mr.  Justice  Story 


356  LAW    OF    PATENTS. 

<§,  313.  The  last  defence  mentioned  in  the  statute,  is,  that  the 


said,  "  The  passage  cited  from  Mr.  Phillips's  work  on  Patents,  (p.  395,)  in 
the  sense  in  which  I  understand  it,  is  perfectly  accurate.  He  there  ex- 
pressly states,  that  the  party  claiming  a  patent  must  be  the  original  and  first 
inventor ;  and  that  his  right  to  a  patent  will  not  be  defeated  by  proof,  that 
another  person  had  anticipated  him  in  making  the  invention,  unless  such  per- 
son "  was  using  reasonable  diligence  in  adapting  and  perfecting  the  same." 
These  latter  words  are  copied  from  the  fifteenth  section  of  the  Act  of  1836, 
chapter  357,  and  constitute  a  qualification  of  the  preceding  language  of  that 
section  ;  so  that  an  inventor,  who  has  first  actually  perfected  his  invention, 
will  not  be  deemed  to  have  surreptitiously  or  unjustly  obtained  a  patent  for 
that,  which  was  in  fact  first  invented  by  another,  unless  the  latter  was  at  the 
time  using  reasonable  diligence  in  adapting  and  perfecting  the  same.  And 
this  I  take  to  be  clearly  law  ;  for  he  is  the  first  inventor  in  the  sense  of  the 
Act,  and  entitled  to  a  patent  for  his  invention,  who  has  first  perfected  and 
adapted  the  same  to  use  ;  and  until  the  invention  is  so  perfected  and  adapted 
to  use,  it  is  not  patentable.  An  imperfect  and  incomplete  invention,  resting 
in  mere  theory,  or  in  intellectual  notion,  or  in  uncertain  experiments,  aild  not 
actually  reduced  to  practice,  and  embodied  in  some  distinct  machinery,  appa- 
ratus, manufacture,  or  composition  of  matter,  is  not,  and  indeed  cannot  be, 
patentable  under  our  patent  acts ;  since  it  is  utterly  impossible,  under  such 
circumstances,  to  comply  with  the  fundamental  requisites  of  those  acts.  In 
a  race  of  diligence  between  two  independent  inventors,  he  who  first  reduces 
his  invention  to  a  fixed,  positive,  and  practical  form,  would  seem  to  be  enti- 
tled to  a  priority  of  right  to  a  patent  therefor.  (Woodcock  v.  Parker,  1 
Galiis.  R.  438.)  The  clause  of  the  fifteenth  section,  now  under  considera- 
tion, seems  to  qualify  that  right,  by  providing  that,  in  such  cases,  he  who 
invents  first  shall  have  the  prior  right,  if  he  is  using  reasonable  diligence  in 
adapting  and  perfecting  the  same,  although  the  second  inventor  has,  in  fact, 
first  perfected  the  same,  and  reduced  the  same  to  practice  in  a  positive  form. 
It  thus  gives  full  eflfect  to  the  well-known  maxim,  that  he  has  the  better 
right,  who  is  prior  in  point  of  time,  namely,  in  making  the  discovery  or 
invention.  But  if,  as  the  argument  of  the  learned  counsel  insists,  the  text 
of  Mr.  Phillips  means  to  affirm,  (what,  I  think,  it  does  not,)  that  he,  who  is 
the  original  and  first  inventor  of  an  invention,  so  perfected  and  reduced  to 
practice,  will  be  deprived  of  his  right  to  a  patent,  in  favor  of  a  second  and 
subsequent  inventor,  simply  because  the  first  invention  was  not  then  known, 
or  used  by  other  persons  than  the  inventor,  or  not  known  or  used  to  such  an 
extent,  as  to  give  the  public  full  knowledge  of  its  existence,  I  cannot  agree 
to  the  doctrine;  for,  in  my  judgment,  our  Patent  Acts  justify  no  such 
construction." 


REMEDY    FOR    INFRINGEMENT    BY    ACTION    AT    LAW.  357 

patentee,  being  an  alien  at  the  time  tlie  patent  was  granted, 
"  had  failed  and  neglected  for  the  space  of  eighteen  months 
from  the  date  of  the  patent,  to  put  and  continue  on  sale  to  the 
public,  on  reasonable  terms,  the  invention  or  discovery,  for 
which  the  patent  issued."  The  object  of  this  provision  was,  to 
prevent  foreign  inventors  from  obtaining  patents  in  this  country, 
and  afterwards  withholding  the  use  of  their  inventions  from  the 
public  for  an  unreasonable  length  of  time. 


CHAPTER   III. 

OF    THE    REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS. 

«§>314.  We  have  seen  that  the  common  law  and  the  statute 
both  afford  a  remedy,  by  an  action  for  damages,  for  the  infringe- 
ment of  patent  rights.  But  this  remedy  would  be  wholly  inad- 
equate to  the  protection  of  such  rights,  if  it  were  not  accom- 
panied and  fortified  by  another  remedy,  which  flows  from  that 
great  principle  of  equity  jurisprudence,  that  where  there  is  a 
legal  right,  and  the  nature  of  the  injury  to  which  it  is  exposed 
is  such  that  a  preventive  remedy  is  indispensable,  equity  will 
afford  that  remedy,  by  an  injunction.  The  grounds  of  the 
equity  jurisdiction  in  cases  of  patents  are,  the  prevention  of 
irreparable  mischiefs,  the  suppression  of  a  multiplicity  of  suits 
and  vexatious  litigation,  and  the  more  complete  discovery,  from 
the  party  guilty  of  infringement,  of  the  extent  of  the  injury 
done  to  the  patentee,  than  can  be  obtained  in  an  action  at  law.^ 
It  does  not  belong  to  the  purposes  of  this  work,  to  trace  the 
origin  of  this  branch  of  equity  jurisdiction,  nor  is  it  necessary 
to  do  so,  since  the  patent  laws  have  expressly  adopted  in  the 
broadest  terms  the  remedy  which  it  affords,  for  the  protection 
of  patent  rights,  and  have  directed  the  proper  courts  "  to  grant 
injunctions  according  to  the  course  and  principles  of  courts  of 
equity,  to  prevent  the  violation  of  the  rights  of  any  inventor  as 
secured  to  him  by  any  law  of  the  United  States,  on  such  terms 
and  conditions  as  the  said  courts  may  deem  reasonable."  ^  All 
that  is  requisite,  therefore,  in  the  present  work,  is  to  develop 


'  2  Story's  Eq.  Jurisp.  §930,  931,  932,  933. 
*  Act  of  July  4,  1836,  c.  357,  ^  17. 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.        359 

the  application  of  the  doctrines  and  practice  of  courts  of  equity 
to  the  rights  of  inventors,  in  the  remedy  by  injunction. 

«§.315.  As  a  prehminary  remark,  however,  we  may  notice, 
that  the  discretion  vested  in  the  court  by  the  terms  of  the  stat- 
ute above  cited,  to  grant  injunctions  on  such  terms  and  condi- 
tions as  the  court  may  deem  reasonable,  is  in  perfect  accordance 
with  the  principles  of  equity .^     This  discretion  is  not  a  wholly 

'  In  Bacon  v.  Jones,  4  Mylne  &  Cr.  433,  436,  Lord  Cottenham  made  the 
following  remarks  on  the  granting  of  injunctions  in  cases  of  patents. 
"  When  a  party  applies  for  the  aid  of  the  court,  the  application  for  an 
injunction  is  made  either  during  the  progress  of  the  suit,  or  at  the  hearing ; 
and  in  both  cases,  I  apprehend,  great  latitude  and  discretion  are  allowed  to 
the  court  in  dealing  with  the  application.  When  the  application  is  for  an 
interlocutory  injunction,  several  courses  are  open;  the  court  may  at  once 
grant  the  injunction,  simpliciter,  without  more  —  a  course  which,  though  per- 
fectly competent  to  the  court,  is  not  very  likely  to  be  taken  where  the 
defendant  raises  a  question  as  to  the  validity  of  the  plaintiff's  title;  or  it 
may  follow  the  more  usual,  and,  as  I  apprehend,  more  wholesome  practice 
in  such  a  case,  of  either  granting  an  injunction,  and  at  the  same  time  direct- 
ing the  plaintiff  to  proceed  to  establish  his  title  at  law,  and  suspending  the 
grant  of  the  injunction  until  the  result  of  the  legal  investigation  has  been 
ascertained,  the  defendant  in  the  mean  time  keeping  an  account.  Which  of 
these  several  courses  ought  to  be  taken,  must  depend  entirely  upon  the  dis- 
cretion of  the  court,  according  to  the  case  made. 

When  the  cause  comes  to  a  hearing,  the  court  has  also  a  large  latitude 
left  to  it ;  and  I  am  far  from  saying  that  a  case  may  not  arise  in  which,  even 
at  that  stage,  the  court  will  be  of  opinion  that  the  injunction  may  properly 
be  granted  without  having  recourse  to  a  trial  at  law.  The  conduct  and 
dealings  of  the  parties,  the  frame  of  the  pleadings,  the  nature  of  the  patent 
right,  and  of  the  evidence  by  which  it  is  established  —  these  and  other  cir- 
cumstances may  combine  to  produce  such  a  result ;  although  this  is  certainly 
not  very  likely  to  happen,  and  I  am  not  aware  of  any  case  in  which  it  has 
happened.  Nevertheless,  it  is  a  course  unquestionably  competent  to  the 
court,  provided  a  case  be  presented  which  satisfies  the  mind  of  the  judge, 
that  such  a  course,  if  adopted,  will  do  justice  between  the  parties. 

Again,  the  court  may,  at  the  hearing,  do  that  which  is  the  more  ordinary 
course;  it  may  retain  the  bill,  giving  the  plaintiff  the  opportunity  of  first 
establishing  his  right  at  law.  There  still  remains  a  third  course,  the  pro- 
priety of  which  must  also  depend  upon  the  circumstances  of  the  case,  that 
of  at  once  dismissing  the  bill." 


360  LAW    OF    PATENTS. 

unreo-ulated  discretion,  but  the  clause  in  which  it  is  expressed 
is  to  be  considered  as  affected  by  the  previous  direction  that  the 
injunction  is  to  be  granted  according  to  the  course  and  princi- 
ples of  courts  of  equity,  which  are  guided  by  certain  well-settled 
rules ;  so  that  the  terms  and  conditions  to  be  imposed  in  each 
case  will  be  ascertained,  by  applying  to  the  circumstances  of  the 
case  those  principles  and  that  course  of  practice  which  have 
been  usually  followed,  and  which  will  admit  of  a  "  reasonable  " 
application  to  the  particular  facts  of  the  case. 

<§>316.  I.  The  Parties.  The  parties  entitled  to  relief  in 
equity  against  the  infringement  of  a  patent  are,  first,  the  party 
or  parties  interested  in  the  patent.  As  the  remedy  in  equity  is 
given  in  order  to  protect  a  legal  right,  and  as  the  statute  gives 
a  right  of  action  to  the  person  or  persons  interested,  whether  as 
patentee,  assignees,  or  grantees  of  the  exclusive  right  for  a  par- 
ticular district,  it  follows  that  any  person  holding  the  legal  title, 
or  the  right  to  bring  an  action,  may  bring  a  bill  for  an 
injunction. 

'^Sn.  We  have  seen  when  the  assignee  of  a  patent  may  sue 
at  law  in  his  own  name,  and  when  he  should  join  his  assignor. 
The  same  rules  will  govern  in  equity,  in  determining  who  are 
necessary  parties  to  the  bill.  If  the  assignee  has  the  whole 
interest,  he  may  sue  alone  ;  but  if  he  has  less  than  the  whole 
interest,  he  must  join  the  patentee.  If  the  assignment  has  not 
been  recorded,  the  assignee  is  not  substituted  to  the  right  and 
responsibility  of  the  patentee,  so  as  to  maintain  any  suit  at  law 
or  in  equity,  founded  upon  the  patent  ;i  and  where  there  is  a 


'  Wyeth  V.  Stone,  1  Story's  R.  273,  295.  Story,  J.  "  The  objection 
which  I  deem  fatal,  is  that  the  bill  states  and  admits,  that  the  assignment  to 
the  plaintiff,  Tudor,  (made  in  February,  1832,)  has  never  yet  been  recorded 
in  the  state  department,  according  to  the  provisions  of  the  Patent  Act  of 
1793,  ch.  55,  ^4.  That  act  provides,  "That  it  shall  be  lawful  for  any 
inventor,  his  executor  or  administrator,  to  assign  the  title  and  interest  in  the 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.        361 

joint  suit  by  the  patentee  and  the  assignee,  and  a  disclaimer  has 
been  filed  by  the  patentee,  in  which  the  assignee  did  not  join, 
the  disclaimer  cannot  operate  in  favor  of  the  complainants  in 
such  a  bill,  or  in  an  action  at  law.^ 

<§,318.  There  is,  however,  one  distinction  between  an  action 
at  law  and  a  suit  in  equity,  in  respect  to  the  parties,  and  that 
is  the  case  of  an  assignment  of  the  exclusive  right  for  a  partic- 
ular district.  The  grantee  of  such  a  right  may  bring  an  action 
at  law,  within  his  own  district,  for  an  infringement,  even  against 
the  patentee  himself,  and  consequently  he  may  bring  such  an 
action  always  in  his  own  name.^ 


said  invention  at  any  lime  ;  and  the  assignee,  having  recorded  the  said  assign- 
ment in  the  office  of  the  Secretary  of  State,  shall  thereafter  stand  in  the 
place  of  the  original  inventor,  both  as  to  right  and  responsibility."  It 
seems  a  necessary,  or,  at  least,  a  just  inference,  from  this  language,  that 
until  the  assignee  has  so  recorded  the  assignment,  he  is  not  substituted  to 
the  right  and  responsibility  of  the  patentee,  so  as  to  maintain  any  suit  at  law 
or  in  equity,  founded  thereon.  It  is  true,  that  no  objection  is  taken  in  the 
pleadings  on  account  of  this  defect ;  but  it  is  spread  on  the  face  of  the  bill, 
and  therefore  the  court  is  bound  to  take  notice  of  it.  It  is  not  the  case  of  a 
title  defectively  set  forth,  but  of  a  title  defective  in  itself,  and  brought  before 
the  court  with  a  fatal  infirmity,  acknowledged  to  be  attached  to  it.  As 
between  the  plaintiffs  and  the  defendants,  standing  upon  adverse  titles 
and  rights  (whatever  might  be  the  case  between  privies  in  title  and  riglit.) 
Tudor  has  shown  no  joint  interest  sufficient  to  maintain  the  present  bill ;  and 
therefore  it  must  be  dismissed  with  costs." 

>  Ibid.  294. 

^  "  The  sixth  question  certified  is  as  follows  :  whether  the  plaintiff,  if  he 
be  an  assignee  of  an  exclusive  right  to  use  tvt-o  of  the  patented  machines 
within  the  town  of  Watervliet,  has  such  an  exclusive  right  as  will  enable 
him  to  maintain  an  action  for  an  infringement  of  the  patent  within  the  said 
town  ;  or  whether,  to  maintain  such  action,  the  plaintiff  must  be  possessed, 
as  to  that  territory,  of  all  the  rights  of  the  original  patentee.  The  plaintiff 
is  the  grantee  of  the  exclusive  right  to  construct  and  use,  and  to  vend  to 
others  to  be  used,  two  of  the  patented  machines  within  the  town  of  Water- 
vliet, in  the  county  of  Albany.  The  fourteenth  section  of  the  patent  law 
authorizes  any  person,  who  is  a  grantee  of  the  exclusive  right  in  a  patent 
within  and  throughout  a  specified  portion  of  the  United  States,  to  maintain 
31 


362  "^AW    OF    PATENTS. 

v§,3l9.  But  in  equity  the  patentee  may  be  joined  with  the 
assignee  of  such  an  exclusive  right,  if  it  be  a  right  to  use  a  Hm- 
ited  number  of  the  patented  machines  in  a  particular  district, 
because  the  interest  of  the  patentee  is  not  all  vested  in  the 
prantee,  who,  although  he  may  prevent  the  patentee  from  licens- 
ino-  other  persons  within  the  district,  cannot  obtain  for  himself 
the  right  to  use  more  machines  than  the  original  grant  author- 
ized, without  paying  the  patentee  for  such  further  license. 
This  interest  renders  the  patentee  a  proper  party  in  such 
a  bill.^  Different  persons,  who  have  infringed  a  patent  inde- 
pendently of  each  other,  cannot  be  made  defendants  in  the 
same  bill.^ 

<§>  320.  II.  The  Bill.  —  A  bill  for  an  injunction  to  restrain 
the  infringement  of  a  patent,  after  the  address  to  the  court  and 
the  statement  of  the  parties,  should  recite  the  application  for  the 
letters-patent,  by  the  inventor,  and  the  compliance  by  him  with 
all  the  pre-requisites  for  obtaining  them,  and  the  issue  of  the 
letters,  giving  the  title  as  it  is  contained  in  them,  verbatim, 
their  attestation  by  the  proper  officers,  and  their  delivery  to  the 
patentee.  Profert  of  the  letters  should  be  made,  but  it  is  not 
necessary  to  set  forth  the  description  of  the  invention  given  in 
the  specification.^  It  is  necessary,  however,  to  stale  that  the 
plaintiff,  after  the  issuing  of  the  patent,  put  his  invention  into 
use,  and  is,  at  the  time  of  filing  the  bill,  in  the  exclusive  pos- 


an  action  in  his  own  name  for  an  infringement  of  the  right.  The  plaintiff 
comes  within  the  very  terms  of  the  section.  Although  limited  to  the  use 
of  two  machines  within  the  town,  the  right  to  use  them  is  exclusive.  No 
other  party,  not  even  the  patentee,  can  use  a  right  under  the  patent  within 
the  territory  without  infringing  the  grant."  Wilson  v.  Rousseau,  4  How- 
ard, 646,  686. 

'  Woodworth  v.  Wilson,  4  Howard,  712.  It  had  been  previously  held 
that  the  grantee  for  a  particular  district  can  maintain  a  bill  for  an  injunction 
and  account.     Ogle  v.  Ege,  4  Wash.  584. 

*  Dilly  V.  Doig,  2  Ves.  Jr.  487. 

=»  Kay  V.  Marshall,  1  M.  &  Cr.  373 ;  Westhead  v.  Keane,  1  Beav.  287. 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.         363 

session  of  it.^  If  the  bill  is  brought  upon  the  title  of  an 
assignee,  either  of  the  whole  or  a  part  of  the  interest,  or  of  an 
administrator,  or  if  the  patent  has  been  renewed,  or  extended, 
or  amended  by  a  disclaimer,  the  facts  should  be  properly  set 
forth,  to  show  the  present  state  of  the  tide  and  the  right  for 
which  protection  is  asked.  The  bill  should  further  state  the 
infringement  complained  of,  whether  it  has  been  actually  com- 
mitted or  is  threatened,  and  if  the  right  has  been  previously 
established  by  an  action  at  law,  against  the  same  or  any  other 
party,  or  an  injunction  has  been  previously  obtained  against  the 
same  or  any  other  party,  the  fact  should  be  set  forth.-  These 
averments  are  usually  followed  by  a  statement  that  the  defend- 
ant has  been  requested  to  desist  from  the  use  of  the  invention, 
and  to  account  for  the  damages  which  the  plaintifl'has  sustained. 
Then  follows  the  charge  of  actual  combination  by  the  defend- 
ant with  others,  if  the  facts  require  it,  and  of  a  conspiracy,  if 
one  is  intended  to  be  proved,  to  destroy  the  plaintift^'s  exclusive 
privilege.  The  prayer  of  the  bill  is  for  a  discovery  upon  oath 
and  particular  answers  to  the  interrogatories,  which  should  be 
pointed  at  all  the  previous  material  averments  in  the  bill,  for  a 
general  answer  to  the  bill,  for  a  decree  that  the  defendant 
account  for  and  pay  over  the  gains  and  profits  which  have 
accrued  to  him  from  using  the  invention,  for  an  injunction  to 
restrain  the  defendant  from  the  further  use  of  the  invention, 
and  to  compel  the  delivery  or  destruction  of  the  machines  or 
other  things  which  he  has  made,  and  for  further  relief.  The 
prayer  should  close  with  asking  for  a  writ  of  injunction,  and  a 
subpoena.     The  bill  should  be  sworn  to,  by  the  usual  affidavit. 

"§>  321.  It  may  often  be  a  serious  question,  whether  an  origi- 
nal bill  filed  for  an  injunction  and  other  relief  is  affected  by  a 
subsequent  surrender  and  renewal  of  the  patent,  pending  the 


'  Isaacs  V.  Cooper,  4  Wash.  359. 

*  See  the  observations  of  Mr.  Justice  Story,  cited  from  Woodworth  v. 
Stone,  post.     See  also  Orr  v.  Littlefiekl,  1  Woodbury  &  M.  13. 


364  LAW     OF     PATENTS. 

proceedings.  In  a  case  where  this  had  happened,  and  a  tempo- 
rary injunction  had  been  granted  on  the  original  bill,  in  which 
the  patentee  and  certain  assignees  were  plaintiffs,  and  upon  the 
new  patent  a  supplemental  bill  was  filed  against  the  defendant 
for  the  continuance  of  the  injunction  and  other  relief,  the  injunc- 
tion was  ordered  to  stand  continued,  as  to  the  new  patent,  stated 
in  the  supplemental  bill,  until  the  hearing  or  farther  order. 
Hence  it  appears,  that  when  a  patent  is  surrendered  and  renewed, 
pending  a  temporary  injunction,  a  supplemental  bill  is  necessary, 
in  order  to  continue  the  injunction  as  to  the  new  patent.^ 


'  Woodworth  v.  Stone,  3  Story's  R.  749,  750.  Story,  J.  —  "  If  the  pre- 
sent case  had  stood  merely  upon  the  original  bill,  it  appears  to  me  clear, 
that  the  motion  to  dissolve  the  injunction  granted  upon  that  bill,  ought  to 
prevail,  because,  by  the  surrender  of  the  patent,  upon  which  that  bill  is 
founded,  the  right  to  maintain  the  same  would  be  entirely  gone.  I  agree 
that  it  is  not  in  the  power  of  the  patentee  by  a  surrender  of  his  patent,  to 
affect  the  rights  of  third  persons,  to  whom  he  has  previously,  by  assignment, 
passed  his  interest  in  the  whole  or  a  part  of  the  patent,  without  the  consent 
of  such  assignees.  But,  here,  the  supplemental  bill  admits,  that  the 
assignees,  who  are  parties  to  the  original  and  supplemental  bill,  have  con- 
sented to  such  surrender.  They  have,  therefore,  adopted  it,  and  it 
became  theirs  in  the  same  manner  as  if  it  had  been  their  personal  act,  and 
done  by  their  authority. 

The  question,  then,  is  precisely  the  same,  as  if  the  suit  were  now  solely 
in  behalf  of  the  patentee.  In  order  to  understand  with  clearness  and  accu- 
racy some  of  the  objections  to  the  continuance  of  the  injunction,  it  may  be 
necessary  to  state,  that  the  original  patent  to  William  Woodworth,  (the 
inventor,)  who  is  since  deceased,  was  granted  on  the  27th  of  December, 
1828.  Subsequently,  under  the  18th  section  of  the  Act  of  1836,  ch.  357, 
the  Commissioner  of  Patents,  on  the  16th  of  November,  1812,  recorded  the 
patent  in  favor  of  William  W.  Woodworth,  the  administrator  of  William 
Woodworth  (the  inventor)  for  seven  years  from  the  27tli  of  December,  1849, 
(to  wliicli  time  the  renewed  patent  extended)  ;  and  the  Commissioner  of 
Patents  was  directed  to  make  a  certificate  of  such  extension  in  the  name  of 
the  administrator  of  William  Woodworth,  (the  inventor,)  and  to  append  an 
authenticated  copy  thereof  to  the  original  letters-patent,  whenever  the  same 
shall  be  requested  by  the  said  administrator  or  his  assigns.  The  Commis- 
sioner of  Patents,  accordingly,  on  the  3d  of  March,  1845,  at  the  request  of 
the  administrator,  made  such  certificate  on  the  original  patent.  On  the  8th 
of  July,  1845,  the  administrator  surrendered  the  renewed  patent  granted  to 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.        365 

>§>  322.  III.   The  Injunction.  —  We  have  now  to  state,  in  the 
first  place,  the  general  principles  on  wiiich  Courts  of  Equity  pro- 

him  "  on  account  of  a  defect  in  the  specificalion."  The  surrender  was 
accepted,  and  a  new  patent  was  granted  on  the  same  day  to  the  administra- 
tor, reciting  the  preceding  facts,  and  tliat  the  surrender  was  "  on  account  of  - 
a  defective  specification,"  and  declaring  that  the  new  patent  was  extended 
for  fourteen  years  from  the  27th  of  December,  1828,  "  in  trust  for  the  heirs 
at  law  of  the  said  William  Woodworth,  (the  inventor,)  their  heirs,  adminis- 
trators or  assigns." 

Now,  one  of  the  objections  taken  to  the  patent  is,  that  it  is  for  the  term 
of  fourteen  years,  and  not  for  the  term  of  seven  years,  or  for  two  successive 
terms  of  seven  years.  But  it  appears  to  me  that  this  objection  is  not  well 
founded,  and  stands  inter  Apices  juris ;  for  the  new  patent  should  be  granted 
for  the  whole  term  of  fourteen  j^ears  from  the  27th  of  December,  and  the  legal 
effect  is  the  same  as  it  would  be,  if  the  patent  was  specifically  renewed  for 
two  successive  terms  of  seven  years.  The  new  patent  is  granted  for  the 
unexpired  term  only,  from  the  date  of  the  grant,  viz.,  for  the  unexpired 
period  existing  on  the  8th  of  July,  1845,  by  reference  to  the  original  grant  in 
December,  1828.  It  is  also  suggested,  that  the  patent  ought  not  to  have 
been  in  trust  for  the  heirs  at  law  of  the  said  William  Woodworth,  their 
heirs,  administrators,  or  assigns.  But  this  is,  at  most,  a  mere  verbal  error, 
if  indeed  it  has  any  validity  whatsoever  ;  for  the  new  patent  will,  by  operation 
of  law,  enure  to  the  sole  benefit  of  the  parties,  in  whose  favor  the  law 
designed  it  should  operate,  and  not  otherwise.  It  seems  to  me  that  the 
case  is  directly  within  the  purview  of  the  10th  and  13th  sections  of  the  Act 
of  1836,  oh.  357,  taking  into  consideration  their  true  intent  and  objects. 

Another  objection  urged  against  the  continuation  of  the  injunction  is,  that 
the  breach  of  the  patent  assigned  in  the  original  bill  can  have  no  application 
to  the  new  patent,  and  there  is  no  ground  to  suggest,  that,  since  the  injunc- 
tion was  granted,  there  has  been  any  new  breach  of  the  old  patent,  or  any 
breach  of  the  new  patent.  But  it  is  by  no  means  necessary,  that  any  such 
new  breach  should  exist.  The  case  is  not  like  that  of  an  action  at  law  for 
the  breach  of  a  patent,  to  support  which  it  is  indispensable  to  establish  a 
breach  before  the  suit  was  brought.  But  in  a  suit  in  equity,  the  doctrine  is 
far  otherwise.  A  bill  will  lie  for  an  injunction,  if  the  patent  right  is  admitted 
or  has  been  established,  upon  well-grounded  proof  of  an  apprehended  inten- 
tion of  the  defendant  to  violate  the  patent  right.  A  bill,  (juia  timet,  is  an 
ordinary  remedial  process  in  equity.  Now,  the  injunction  already  granted 
(supposing  both  patents  to  be  for  the  same  invention)  is  prima  facie  evidence 
of  an  intended  violation,  if  not  of  an  actual  violation.  And  the  atfidavit  of 
James  N.  Buffum  is  very  strong  and  direct  evidence  to  this  same  effect. 
But  the  most  material  objection  taken  is,  that  the  new  patent  is  not  for  the 
31* 


366  LAW    OF     PATENTS. 

ceed  in  granting,  continuing,  or  dissolving  injunctions,  in  cases 
of  patents.     To  obtain  an  injunction,  the  plaintifl'  must  accom- 

same  invention,  as  that  which  has  been  surrendered.  And,  certainly,  if  this 
be  correct,  there  is  a  fatal  objection  to  the  prolongation  of  the  injunction. 
But  is  the  objection  well  founded  in  point  of  fact?  It  is  said,  that  the  pre- 
sent patent  is  for  a  combination  only,  and  that  the  old  patent  was  for  a  com- 
bination and  something  more,  or  different.  But  I  apprehend  that,  upon  the 
face  of  the  present  patent,  the  question  is  scarcely  open  for  the  consideration 
of  the  court;  and,  at  all  events,  certainly  not  open  in  this  stage  of  the 
cause.  I  have  already,  in  another  cause,  had  occasion  to  decide,  that  where 
the  Commissioner  of  Patents  accepts  a  surrender  of  an  old  patent  and  grants 
a  new  one,  under  the  Act  of  1836,  ch.  357,  his  decision,  being  an  act 
expressly  confided  to  him  by  law,  and  dependent  upon  his  judgment,  is  not 
re-examinable  elsewhere  ;  and  that  the  court  must  take  it  to  be  a  lawful 
exercise  of  his  authority,  unless  it  is  apparent  upon  the  very  face  of  the 
patent,  that  he  has  exceeded  his  authority,  and  there  is  a  clear  repugnancy 
between  the  old  and  the  new  patent,  or  the  new  one  has  been  obtained  by 
collusion  between  the  Commissioner  and  the  patentee.  Now,  upon  the  face 
of  it,  the  new  patent,  in  the  present  case,  purports  to  be  for  the  same  inven- 
tion and  none  other,  that  is  contained  in  the  old  patent.  The  avowed  differ- 
ence between  the  new  and  the  old,  is,  that  the  specification  in  the  old  is 
defective,  and  that  the  defect  is  intended  to  be  remedied  in  the  new  patent. 
It  is  upon  this  very  ground,  that  the  old  patent  was  surrendered,  and  the 
new  patent  was  granted.  The  claim  in  the  new  patent  is  not  of  any  new 
invention;  but  of  the  old  invention  more  perfectly  described  and  ascertained. 
It  is  manifest  that,  in  the  first  instance,  the  Commissioner  was  the  proper 
judge  whether  the  invention  was  the  same  or  not,  and  whether  there  was 
any  deficit  in  the  specification  or  not,  by  inadvertence,  accident,  or  mistake ; 
and  consequently  he  must  have  decided  that  the  combination  of  machinery 
claimed  in  the  old  patent  was,  in  substance,  the  same  combination  and  inven- 
tion claimed  and  described  in  the  new.  My  impression  is,  that  at  the  former 
trial  of  the  old  patent  before  me,  I  held  the  claim  substantially,  (although 
obscurely  worded,)  to  be  a  claim  for  the  invention  of  a  particular  combi- 
nation of  machinery  for  planing,  tonguing,  and  grooving,  and  dressing 
boards,  &c. ;  or  in  other  words,  that  it  was  the  claim  of  an  invention 
of  a  planing  machine  or  planing  apparatus  such  as  he  had  described  in  his 
specification. 

It  appears  tome,  therefore,  that  prima  facie,  and,  at  all  events,  in  this 
stage  of  the  cause,  it  must  be  taken  to  be  true  that  the  new  patent  is  for  the 
same  invention  as  the  old  patent;  and  that  the  only  difference  is,  not  in  the 
invention  itself,  but  in  the  specification  of  it.  In  the  old,  it  was  defectively 
described  and  claimed.     In  the  new,  the  defects  are  intended  to  be  remedied. 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.        367 

pany  his  application  with  an  affidavit  that  he  then  beheves  him- 
self to  be  the  original  and  first  inventor  of  the  thing  patented, 
for,  it  is  said,  although  when  he  obtained  his  patent  he  might 
have  very  honestly  sworn  as  to  his  belief  of  such  being  the  fact, 
yet  circumstances  may  have  subsequently  intervened,  or  inform- 
ation may  have  been  communicated,  sufficient  to  convince  iiim 
that  it  was  not  his  own  original  invention,  and  that  he  was 
under  a  mistake  when  he  applied  for  his  patent.^  Such  a  spe- 
cial affidavit  was  required  by  Mr.  Justice  Washington  to  be  sub- 
joined to  a  bill.-  And  it  is  the  usual  practice,  on  moving  for 
an  injunction  before  the  answer  has  been  filed,  to  read  such  an 
affidavit,  as  well  as  others  to  the  same  purport.^ 

<§>  323.  In  the  courts  of  the  United  States,  notice  that  an 
injunction  is  to  be  applied  for,  must  be  served  on  the  defend- 
ant, as  no  injunction,  whether  temporary  or  final,  can  be  granted 
without  reasonable  previous  notice  to  the  adverse  party  or  his 
attorneys,  of  the   time  and   place   of  moving  for  the  same.^ 


Whether  they  are  effectually  remedied  is  a  point  not  now  properly  before 
the  court.  But  as  the  Commissioner  of  Patents  has  granted  the  new  patent 
as  for  the  same  invention  as  the  old,  it  does  not  appear  to  me,  that  this  court 
is  now  at  liberty  to  revise  his  judgment,  or  to  say,  that  he  has  been  guilty  of 
an  excess  of  authority,  at  least,  (as  has  been  already  suggested,)  not  in  this 
stage  of  the  cause  ;  for  that  would  be  for  the  court  of  itself  to  assume  to 
decide  many  matters  of  fact,  as  to  the  specification,  and  the  combination  of 
machinery  in  both  patents,  without  any  adequate  means  of  knowledge  or  of 
guarding  itself  from  gross  error.  For  the  purpose  of  the  injunction,  if  for 
nothing  else,  I  must  take  the  invention  to  be  the  same  in  both  patents,  after 
the  Commissioner  of  Patents  has  so  decided,  by  granting  the  new  patent. 

Upon  the  whole,  therefore,  I  do  order  and  direct,  that  the  injunction  do 
stand  continued,  as  to  the  new  patent,  stated  in  the  supplemental  bill,  until 
the  hearing  or  farther  order  of  the  court." 

>  Hill  V.  Thompson,  3  Meriv.  622,  G24  ;  Sturz  v.  Be  La  Rue,  5  Russ. 
Ch.  R.  322.  The  same  reason  exists  at  the  time  of  the  application, 
although  the  bill  itself  was  sworn  to  when  filed. 

2  Rogers  v.  Abbott,  4  Wash.  514  ;  Ogle  v.  Eye,  Ibid.  584. 

3  See  further  as  to  affidavits,  post,  at  the  end  of  this  chapter. 

"  Act  2d  March,  1793,  ch.  22,  §  5  ;  Perry  v.  Parker,  1  Woodbury  &  M. 
280,  281. 


368  LAW     OF     PATENTS. 

Injunctions,  therefore,  are  not  granted  in  our  courts  on  ex  parte 
applications,  in  cases  of  patents,  although  they  may  be  granted 
on  filing  the  bill  and  before  answer,  on  notice  to  the  party  to  be 
affected,  as  well  as  after  answer  and  upon  the  hearing. 

«§>  324.  The  bill  and  the  application  being,  then,  in  proper 
form,  the  first  thing  to  be  considered  is,  whether  the  Court  will 
require  the  patentee  to  establish  his  legal  right  by  an  action  at 
law,  before  it  grants  the  injunction,  or  whether  it  will  grant  the 
injunction,  in  the  first  instance,  upon  the  proof  of  a  legal  right, 
furnished  by  the  bill  itself,  and  the  accompanying  affidavits.  Upon 
this  point,  the  rule,  as  it  was  laid  down  by  Lord  Eldon,  is,  that 
where  a  patent  has  been  granted,  and  there  has  been  an  exclu- 
sive possession  of  some  duration  under  it,  the  court  will  inter- 
pose its  injunction,  without  putting  the  party  previously  to 
establish  the  validity  of  his  patent  by  an  action.  But  where  the 
patent  is  but  of  yesterday,  and,  upon  an  application  being  made 
for  an  injunction,  it  is  endeavored  to  be  shown,  in  opposition  to 
it,  that  there  is  no  good  specification,  or  otherwise,  that  the 
patent  ought  not  to  have  been  granted,  the  court  will  not  from 
its  own  notions  upon  the  matter  in  dispute,  act  upon  the  pre- 
sumed validity  or  invalidity  of  the  patent,  without  the  right 
having  been  ascertained  by  a  previous  trial,  but  will  send  the 
patentee  to  law,  to  establish  the  validity  of  his  patent  in  a  court 
of  law,  before  it  will  grant  him   the  benefit  of  an  injunction.^ 

<§.  325.  The  rule  thus  stated  has  been  followed  by  our  own 
courts,  with  further  explanations,  which  extend  its  application  to 
the  particular  facts  of  the  cases  that  have  arisen.  Thus,  Mr.  Jus- 
tice Washington  laid  down  the  rule,  as  follows,  that  the  practice 
is,  to  grant  an  injunction  upon  the  filing  of  the  bill,  and  before  a 
trial  at  law,  if  the  bill  state  a  clear  right,  and  verify  the  same  by 
affidavit.  If  the  bill  states  an  exclusive  possession  of  the  inven- 
tion, or  discovery,  an  injunction  is  granted,  although  the  court 

'  Hill  V.  Thompson,  3  Meriv.  622,  624. 


I 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.         369 

may  feel  doubts  as  to  the  validity  of  the  patent.  But  if  the 
defects  in  the  patent  or  specification  are  so  glaring  that  the  court 
can  entertain  no  doubt  as  to  that  point,  it  would  be  most  unjust 
to  restrain  the  defendant  from  using  a  machine,  or  other  thing, 
which  he  may  have  constructed,  probably,  at  great  expense, 
until  a  decision  at  law  can  be  had.^  Upon  another  occasion, 
the  same  learned  judge  laid  down  the  general  rule  in  these 
terms,  that  where  the  bill  states  a  clear  right  to  the  thing 
patented,  which,  together  with  the  alleged  infringement,  is  veri- 
fied by  affidavit,  if  he  has  been  in  possession  of  it,  by  having 
used  or  sold  it  in  part,  or  in  the  whole,  the  court  will  grant  an 
injunction,  and  continue  it  till  the  hearing,  or  further  order, 
without  sending  the  plaintiff  to  law  to  try  the  right.  But,  if 
there  appeared  to  be  a  reasonable  doubt,  as  to  the  pliintiff's 
right,  or  as  to  the  validity  of  the  patent,  the  court  will  require 
the  plaintiff  to  try  his  title  at  law,  sometimes  accompanied  with 
an  order  to  expedite  the  trial,  and  will  permit  him  to  return  for 
an  account,  in  case  the  trial  at  law  should  be  in  his  favor.  Mr. 
Justice  Story,  in  Washburn  v.  Gould,  referred  to  and  adopted 
the  general  rule  laid  down  by  Lord  Eldon,  in  Hill  v.  Thompson. 
In  this  case  there  had  been  a  trial  at  law,  which  resulted  in 
favor  of  the  patentee.-  Mr.  Justice  Woodbury  has,  in  several 
cases,  also  acted  upon  it,  with  modifications,  which  will  pre- 
sently be  stated.^ 

<§»3-26.  It  appears,  therefore,  that  upon  the  question  of  first 
sending  the  plaintiff  to  law  to  try  the  validity  of  his  patent, 
the  general  rule  must  be  subdivided  according  to  the  aspect 
and  position  of  the  case  before  the  court.  The  cases  may 
be  ranged  under  three  different  classes.  First,  where  there 
is  nothing  before  the  court,  as  evidence,  but  the  bill  and  the 
affidavits  in  support  of  it ;  second,  where  the  injunction  is  asked 

*  Isaacs  V.  Cooper,  4  Wash.  259,  260. 

2  3  Story's  R.  156,  169. 

3  Orr  V.  Littlefield,  1  W.  &  M.  13  ;  Woodvvorth  v.  Hall,  Ibid.  248  ;  H.ovey 
V.  Stevens,  Ibid.  290. 


370  LAW    OF    PATENTS. 

before  the  final  hearing,  and  the  respondent  offers  evidence, 
either  in  the  answer,  or  by  affidavits,  affecting  the  validity  of 
the  patent ;  third,  where  the  question  comes  on  upon  the  hear- 
ing, and  the  full  proofs  taken  in  the  cause. 

"§.  327.  These  different  aspects  of  the  cause  may  now  be 
considered  separately,  with  reference  to  this  question.  First, 
Vi^here  the  plaintiff  asks  for  an  injunction  upon  the  bill  and 
affidavits,  and  no  opposing  evidence  is  adduced,  but  the  respond- 
ent appears  and  objects.  In  such  cases,  the  bill  and  the  affi- 
davits must  show  the  issuing  of  the  patent,  and  an  exclusive 
possession  of  the  right  of  some  duration  ;  and,  when  these  are 
shown,  although  the  court  may  feel  some  doubts,  as  to  the 
validity  of  the  patent,  the  injunction  will  be  granted  without  a 
previous  trial  at  law  ;  but  if  the  patent  contains  glaring  defects, 
so  that  no  doubt  can  be  entertained,  or  the  bill  is  defective  in 
material  allegations,  the  injunction  will  not  be  granted,  but  the 
plaintiff  will  be  required  to  try  his  title  at  law.^  Some  addi- 
tional evidence,  besides  the  mere  issue  of  the  patent,  must  be 
offered  ;  and  this  evidence  will  be  the  fact,  that  after  he  had  pro- 
cured his  patent,  the  plaintiff  proceeded  to  put  that  right  into 
exercise  or  use  for  some  time,  without  being  disturbed  ;  a  cir- 
cumstance that  strengthens  the  probability  that  the  patent  is 
good,  and  renders  it  so  likely,  as  alone  often  to  justify  the  issue 
of  an  injunction  in  aid  of  it.^  It  will  also  be  further  additional 
evidence,  in  support  of  the  prima  facie  right  to  an  injunction, 
that  the  patentee  has  successfully  prosecuted  other  persons  for 
violating  it.^ 


'  Hill  V.  Thompson,  3  Meriv.  622  ;  Hartner  v.  Plane,  14  Ves.  130,  133 ; 
Isaacs  V.  Cooper,  4  Wash.  259  ;  Ogle  v.  Ege,  Ibid.  584  ;  Woodworth  v. 
Hall,  1  Woodbury  &  M.  248.  Length  of  enjoyment  is  to  be  looked  to  in 
answer  to  a  theoretical  objection  to  the  specification.  Rickford  v.  Skewes, 
Webs.  Pat.  Cas.  211,  213. 

^  Orr  t).  Littlefield,  1  Woodb.  &  M.  13,  16.  As  to  length  of  possession, 
see  the  observations  of  Mr.  Justice  Woodbury,  cited  from  this  case,  post. 

'  Ibid. 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.        371 

§  328.  Secondly.  Where  the  injunction  is  asked  for  before 
the  hearing,  but  opposing  evidence  is  adduced  by  the  respond- 
ent against  the  validity  of  the  patent.  In  these  cases,  several 
elements  enter  into  the  rule  that  is  to  guide  the  discretion  of  the 
court.  How  far,  and  for  what  length  of  time  there  has  been  an 
exclusive  possession  or  assertion  of  the  right ;  how  far  the 
respondent  has  succeeded  in  raising  doubts  as  to  the  novelty  of 
the  invention,  or  as  to  its  being  a  patentable  subject,  or  as  to 
the  infringement ;  and  how  far  a  long  possession  will  go  to 
counteract  evidence  impeaching  the  validity  of  the  patent  —  are 
some  of  the  circumstances  to  be  weighed  in  determining  whether 
the  plaintiff's  prima  facie  right  to  an  injunction  has  been 
answered  by  the  respondent,  to  that  extent,  that  the  court  will 
suspend  the  injunction  until  the  plaintiff  has  established  his  right 
by  an  action.  It  seems  to  be  the  result  of  all  the  authorities 
that  there  is  di  prima  facie  right  to  an  injunction,  without  a  trial 
at  law,  upon  certain  things  being  shown,  namely,  a  patent,  long 
possession,  and  infringement.^  The  question  will  therefore  be, 
in  cases  of  opposing  evidence,  where  that  right  has  been  shown, 
whether  it  has  been  displaced  by  the  respondent. 

<§.  329.  When  the  presumption  in  favor  of  the  validity  of  the 
patent  has  been  strengthened  by  evidence  of  enjoyment  and 
possession  undisturbed  for  several  years,  and  recoveries  against 
other  persons  for  violating  it,  it  will  not  be  sufficient  to  deprive 

1 ' ' 

>  In  Neilson  v.  Thompson,  Webs.  Pat.  Cas.  277,  Sir  L.  Shadwell,  V.  C, 
said:  "  It  seems  to  me,  on  these  affidavits,  that  it  is  sufficiently  made  out 
that  there  has  been  a  use  of  the  patent  in  this  sense,  that  the  right  of  the 
patentee  to  the  benefit  of  the  patent  has  been  submitted  to  where  there  has 
been  a  contest,  and  it  does  not  at  all  appear  to  me  that  the  general  way  in 
which  the  defendants,  on  their  affidavit,  state  the  mode  by  means  of  which 
the  plaintiffs  succeeded  in  establishing  the  patent,  is  at  all  an  answer  to  the 
two  cases  which  are  stated  in  Mr.  Blunt's  affidavit.  Then  I  have  the  case  of 
a  patent,  having  been  obtained  in  the  year  1828,  and  actually  enjoyed  by  the 
patentee  for  upwards  of  twelve  years.  Prima  facie,  I  apprehend,  that  gives 
a  right  to  the  patentee  to  come  into  court  in  a  case  in  which  he  can  show  an 
infringement ;  and  the  question  is,  has  there  been  an  infringement ■?  " 


372  LAW    OF      PATENTS. 

the  plaintiff  of  the  injunction  before  a  trial  at  law,  for  the 
defendant  to  read  afHdavits  tending  to  cast  doubts  on  the  origi- 
nality of  the  invention,  especially  if  that  evidence  is  answered 
by  what  is  stronger  on  the  part  of  the  patentee.^ 

'  Orr  V.  Litllefield,  1  Woodb.  &  M.  13.  In  this  case,  Mr.  Justice  Wood- 
bury said  :  "  It  is  not  enough  that  a  party  has  taken  out  a  patent,  and  thus 
obtained  a  public  grant,  and  the  sanction  or  opinion  of  the  patent  office,  in 
favor  of  his  right,  though  that  opinion,  since  the  laws  were  passed,  requiring 
some  examination  into  the  originality  and  utility  of  inventions,  possesses 
more  weight.  But  the  complainant  must  furnish  some  further  evidence  of  a 
probable  right ;  and  though  it  need  not  be  conclusive  evidence,  —  else  addi- 
tional hearing  on  the  bill  would  thus  be  anticipated  and  superseded,  —  yet  it 
must  be  something  stronger  than  the  mere  issue,  however  careful  and  public, 
of  the  patent,  conferring  an  exclusive  right ;  as,  in  doing  that,  there  is  no 
opposing  party,  no  notice,  no  long  public  use,  no  trial  with  any  one  of  his 
rights.  The  kind  of  additional  evidence  is  this  :  If  the  patentee,  after  the 
procurement  of  his  patent,  conferring  an  exclusive  right,  proceeds  to  put 
that  right  into  exercise  or  use  for  some  years,  without  its  being  disturbed, 
that  circumstance  strengthens  much  the  probability  that  the  patent  is  good, 
and  renders  it  so  likely,  as  alone  often  to  justify  the  issue  of  an  injunction  in 
aid  of  it.  Ogle  v.  Ege,  4  Wash.  C.  C.  584;  2  Story's  Eq.  Jur.  210 ; 
Drew  on  Injunc.  222 ;  Phil,  on  Pat.  462.  After  that,  it  becomes  a  question 
of  public  policy,  no  less  than  private  justice,  whether  such  a  grant  of  a  right, 
exercised,  and  in  possession  so  long,  ought  not  to  be  protected,  until  avoided 
by  a  full  hearing  and  trial.     Ilarmer  v.  Plane,  14  Ves.  130. 

"In  this  case,  the  evidence  is  plenary  and  uncontradicted,  as  to  the  use 
and  sale  of  this  patent,  by  the  inventor  and  his  representative,  for  several 
years,  publicly  and  without  dispute.  Computing  from  the  original  grant,  the 
time  is  over  nine  years,  and  since  the  reissue  of  the  letters-patent  it  is  nearly 
three.  I  concur  in  the  opinion  delivered  by  Judge  Sprague,  in  Orr  v. 
Badger,  that  the  time  to  be  regarded  under  this  view,  is  what  has  elapsed 
since  the  original  issue  or  grant.  Law  Reporter  for  February,  1845.  In 
Thompson  v.  Hill,  3  Meriv.  622,  the  time  was  only  three  years  from  the  first 
grant.  In  Ogle  v.  Eye,  4  Wash.  C.  C.  584,  it  was  but  six  years.  And 
though,  in  some  cases  reported,  it  had  been  thirteen,  and  in  others  twenty 
years,  (14  Ves.  120,)  yet  it  is  believed,  that  seldom  has  a  court  refused  an 
injunction,  in  applications  like  this,  on  account  of  the  shortness  of  time  after 
the  grant,  however  brief,  if  long  enough  to  permit  articles  or  machines  to  be 
constructed,  by  the  patentee,  in  conformity  to  his  claim,  and  to  be  sold  pub- 
licly and  repeatedly,  and  they  have  been  so  used  and  sold,  under  the  patent, 
without  dispute.  Here  the  sales  were  extensive  and  profitable,  from  1836, 
downwards,  and  the  right,  as  well  as  the  possession,  does  not  appear  to  have 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.         373 

>§>  330.  But  when  an  injunction  is  asked  before  the  trial  and 
resisted,  and  doubts  are  cast  on  the  originality  and  validity  of 

been  contested  till  1842.  In  Hill  v.  Thomson,  3  Meriv.  622,  624,  it  is  true 
that  the  court  dissolved  an  injunction,  when  only  about  one  year  had  elapsed 
since  any  work  had  been  completed  under  the  patent,  and  only  two  years 
since  the  specification  was  filed,  the  chancellor  calling  it  a  patent  'but  of  yes- 
terday,' but  he  added  that  he  would  not  dissolve  it,  if  '  an  exclusive  posses- 
sion of  some  duration  '  had  followed ;  though  an  answer  had  been  put  in, 
denying  all  equity,  and  doubts  existed  as  to  the  validity  of  the  patent ;  and 
no  sales  under  it  were  proved  in  that  case.  So,  though  the  patent  had  been 
issued  thirteen  years,  and  the  evidence  is  doubtful,  as  to  acquiescence  in  the 
possession  or  use,  an  injunction  may  be  refused.  Collard  v.  Allison,  4  Mylne 
&  Craig.  487.  But  in  the  present  case,  the  acquiescence  appears  to  have 
been  for  several  years  universal. 

"  Another  species  of  evidence,  beside  the  issue  of  the  patent  itself,  and 
long  use  and  possession  under  it,  so  as  to  render  it  probable  the  patent  is 
good,  and  to  justify  an  injunction,  is  the  fact  that  if  the  patent  becomes  dis- 
puted, the  patentee  prosecutes  for  a  violation  of  his  rights,  and  recovers. 
Same  authorities  ;  Kay  t;.  Marshall,  1  Mylne  &  Craig,  373.  This  goes 
upon  the  ground,  that  he  docs  not  sleep  over  his  claims  or  interests,  so  as  to 
mislead  others,  and  that,  whenever  the  validity  of  his  claim  has  been  tried, 
he  has  sustained  it  as  if  good.  But  such  a  recovery  is  not  regarded  as  bind- 
ing the  final  rights  of  the  parties  in  the  bill,  because  the  action  was  not 
between  ihem;  though,  when  the  judgment  is  rendered  without  collusion  or 
fraud,  it  furnishes  to  the  world  some  strong,  as  well  as  public  assurance, 
that  the  patent  is  a  good  one.  In  this  view  of  the  evidence  of  this  character, 
in  the  present  action,  it  is  not  contradicted,  nor  impaired  at  all,  by  the  judg- 
ments having  been  given  on  verdicts  and  defaults,  under  agreements.  Such 
judgments,  when,  as  is  admitted  here,  not  collusive,  are  as  strong,  if  not 
stronger  evidence  of  the  patentee's  rights,  than  they  would  have  been,  if  the 
claim  was  so  doubtful  as  to  be  sent  to  a  jury  for  decision,  rather  than  to  be  so 
little  doubtful  as  to  be  admitted  or  agreed  to,  after  being  legally  examined. 
Both  of  these  circumstances,  therefore,  possession  and  judgments,  unite  in 
support  of  an  injunction  in  the  present  case. 

"  The  only  answer  to  the  motion,  as  made  out  on  these  grounds,  is,  the 
evidence  offered,  by  affidavits,  on  the  part  of  the  respondents,  tending  to  cast 
doubt  on  the  originality  of  the  invention  of  the  patentee.  I  say,  tending 
to  this,  because  some  of  the  affidavits,  at  least,  do  not  distinctly  show  that 
the  persons  making  them,  intended  to  assert  that  the  whole  of  any  one  of  the 
combination  of  particulars  contained  in  Dr.  Orr's  claim,  in  his  specification, 
had  been  used  before  his  patent  issued  ;  because,  they  are  counteracted  by 
other  testimony,  from  the  witnesses  of  the  complainants,  more  explicit  and 
32 


374  LAW     OF     PATENTS. 

the  patent,  if  the  counterbalancing  and  fortifying  circumstances 
of  long  possession,  use,  or  sale  to  a  considerable  extent,  and 

in  larger  numbers  ;  and  because  in  this  preliminary  inquiry,  where  the  evi- 
dence is  taken,  without  the  presence  or  cross-examination  of  the  opposite 
party,  it  would  be  unsafe  to  settle  and  decide  against  the  validity  of  the 
patent,  when  a  full  and  formal  trial  of  it  is  not  contemplated  till  further  pro- 
gress is  made  in  the  case.  All  that  is  required  in  this  stage,  is,  the  presump- 
tion before  named,  that  the  title  is  good.  This  presumption  is  stronger  here 
than  usual,  as  it  arises  from  the  issue  of  the  patent,  and  an  enjoyment  and 
possession  of  it  undisturbed  for  several  years,  beside  the  two  recoveries 
against  those  charged  with  violating  it. 

"After  these,  other  persons  can,  to  be  sure,  contest  the  validity  of  the 
patent,  when  prosecuted  either  in  equity,  or  at  law  ;  but  it  is  hardly  compe- 
tent for  them  to  deprive  the  complainant  of  her  right,  thus  acquired,  to  an 
injunction,  or,  in  other  words,  to  be  protected  in  so  long  a  use  and  posses- 
sion, till  her  rights  are  disproved,  after  a  full  hearing  ;  surely  it  is  not  rea- 
sonable to  permit  it  when  the  affidavits  of  the  respondents  to  invalidate  or 
cast  a  shade  over  her  right  are  met  by  that  which  is  stronger,  independent  of 
the  long  possession,  judgments,  and  presumptions,  before  mentioned.  But 
another  objection  has  been  urged  in  argument.  When  an  answer  to  the  bill 
denies  all  equity  in  it,  the  respondents  contend  that  an  injunction  would  be 
dissolved,  and  hence  it  ought  not  to  be  imposed,  if  the  respondent  denies 
equity  by  affidavit.  This  may  be  correct,  in  respect  to  injunctions  termed 
common,  as  these  affidavits  and  counter-affidavits  are  inadmissible,  Eden, 
117,  326;  yet,  in  these,  the  denial  must  be  very  positive  and  clear.  Ward 
V.  Van  Bockelen,  1  Paige,  100;  Noble  v.  Wilson,  lb.  164.  But  the  posi- 
tion cannot  be  correct  in  the  case  of  injunctions  called  special,  like  the  pre- 
sent one,  and  where  facts  and  counter-evidence  show  the  case  to  be  different 
from  what  is  disclosed  in  the  atfidavits,  or  an  answer  of  the  respondents 
alone.  No  usage  or  cases  are  found  where  the  injunctions  are  dissolved,  as 
a  matter  of  course,  on  such  answers,  if  the  complainant  has  adduced  auxil- 
iary presumptions  in  favor  of  his  right,  like  those  in  the  present  instance. 
On  the  contrary,  the  cases  are  numerous,  where  the  whole  is  regarded  as 
still  within  the  sound  discretion  of  the  court,  whether  to  issue  the  injunction 
or  refuse  it ;  or,  if  issued,  to  dissolve  or  retain  it.  3  Meriv.  622,  624 ; 
2  Johns.  Ch.  R.  202  ;  3  Sumn.  74  ;  Livingston  v.  Van  lugen,  9  Johns.  R. 
507,  570  ;  Rodgers  v.  Rodgers,  1  Paige,  426.  And  where  the  complainant 
has  made  out  not  merely  a  grant  of  the  patent,  but  possession  and  use,  and 
sale  under  it,  for  some  time,  undisturbed,  and  beside  this,  a  recovery  against 
other  persons  using  it,  the  courts  have  invariably  held  that  such  a  strong 
color  of  title  shall  not  be  deprived  of  the  benefit  of  an  injunction,  till  a  full 
trial  on  the  merits  counteracts  or  annuls  it.     In  several  cases,  where  the 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.  375 

former  recoveries  under  it,  do  not  exist,  the  injunction  will  not 
be  allowed  before  trial. ^ 

*§.  331.  If  the  respondent  succeeds  in  raising  doubts  both  as 
to  the  exclusive  possession  and  as  to  the  novelty  of  what  is 
claimed,  and  the  evidence  on  these  points  is  conflicting,  the 
injunction  will  be  refused  until  a  trial. - 

<§>  332.  If  the  question  of  infringement  is  doubtful,  it  must 
be  tried  by  a  jury  ;  and  in  a  case  of  this  kind,  Sir  L.  Shadwell, 
V.  C,  dissolved  an  injunction,  and  ordered  an  action  to  be 
brought  to  try  the  infringement,  the  respondents  being  ordered 
to  keep  an  account,  and  to  admit  the  plaintiff's  title  to  the 
patent.^  The  same  rule  would  be  applicable  to  the  granting  an 
injunction  in  the  first  instance. 


equities  of  the  bill  were  even  denied,  and  in  others,  where  strong  doubts 
were  raised,  whether  the  patent  could,  in  the  end,  be  sustained  as  valid,  the 
courts  decided,  that  injunctions  should  issue  under  such  circumstances,  as 
have  before  been  stated  in  favor  of  the  plaintiff,  till  an  answer  or  final  hear- 
ing ;  or,  if  before  issued,  should  not  be  dissolved  till  the  final  trial,  and  then 
cease,  or  be  made  perpetual,  as  the  result  might  render  just.  The  Chan- 
cellor, in  Roberts  v.  Anderson,  2  Johns.  Ch.  R.  202,  cites  2  Vesey,  19,  and 
Wyatt's  P.  R.  236  ;  Boulton  v.  Bull,  3  Ves.  140  ;  Universities  of  Oxford 
and  Cambridge  v.  Richardson,  6  Ves.  689,  705  ;  Harmer  v.  Plane,  14  Ves. 
130  ;  and  Hill  v.  Thompson,  3  Mer.  622,  624." 

There  was  a  case  before  Sir  L.  Shadwell,  V.  C,  where  a  good  deal  of 
doubt,  as  to  the  originality  of  the  invention,  was  raised,  by  the  introduction 
of  a  former  patent  and  specification,  but  the  plaintiff  had  enjoyed  uninter- 
rupted possession  for  seven  years  ;  and  the  infringementbeing  clearly  shown, 
the  injunction  was  granted  before  trial,  and  a  trial  ordered.  Losh  v.  Hague, 
Webs.  Pat.  Cas.  200.  In  like  manner,  Mr.  Justice  Story  held  that  the  a&- 
davit  of  a  single  witness,  after  long  possession,  and  other  recoveries  on  the 
patent,  would  not  outweigh  the  oath  of  the  patentee,  and  the  general  pre- 
sumption arising  from  the  grant  of  the  patent.  Woodworth  v.  Sherman, 
3  Story's  R.  171,  172.     See  also  Orr  v.  Badger,  10  Law  Reporter,  465. 

'  Hovey  V.  Stevens,  1  Woodb.  &  M.  290,  303.  The  patent  in  this  case 
had  been  issued  less  than  a  month  before  the  infringement  complained  of. 

«  CoUard  v.  Allison,  4  M.  &  Cr.  487,  488. 

'  Morgan  v.  Seaward,  Webs,  Pat.  Cas.  167. 


376  LAW     OF    PATENTS. 

v^,  333.  It  seems,  also,  that  another  element  to  be  considered 
is,  the  effect  of  the  injunction  on  the  defendant's  business.  As 
the  granting  of  an  injunction  rests  in  the  discretion  of  the 
court  exercised  upon  all  the  circumstances  of  the  case,  and  as 
the  object  of  the  injunction  is  to  prevent  mischief,  it  is  said  that 
where  irreparable  mischief  would  ensue  from  it  to  the  defend- 
ant, it  ought  not  to  be  granted.^  But  this  must  be  understood 
as  applying  to  a  case  where  the  plaintiff"  would  not  be  injured 
by  the  delay,  but  would  be  left  in  statu  quo  after  a  trial  estab- 
lishing the  validity  of  his  patent ;  or  at  least,  where  the  rights 
of  the  plaintiff"  are  capable  of  being  fully  protected  by  an 
account  to  be  kept  in  the  interim  ;  because  the  object  of  the 
court  is  to  preserve  to  each  party  the  benefit  to  which  he  is 
entitled.^ 

<§>  334.  Nor  will  an  injunction  be  granted,  where  the  plaintiflf 
has  permitted  the  defendant  to  go  on  and  incur  expense  under 
the  expectation  of  receiving  a  certain  sum,  if  the  relations 
between  them  are  such  as  to  allow  of  the  defendants  disputing 
the  plaintiff^'s  right  as  patentee.^  But  it  seems  that  where  the 
defendant  is  estopped  at  law  from  denying  the  validity  of  the 
patent,  an  injunction  will  be  granted  ;  but  if  there  is  a  real  ques- 
tion to  be  tried,  and  a  year's  rent  for  the  use  of  the  invention 
is  due,  the  court  will  order  the  money  to  be  paid  into  court,  to 
wait  the  event  of  the  trial."* 

<^  335.  If  the  plaintiff"  shows  the  necessary  possession,  and 
an  infringement  has  actually  been  committed  by  the  defendant, 
the  injunction  will  be  granted,  notwithstanding  the  defendant 
admits  the  infringement  and  promises  not  to  repeat  it.^ 


>  Neilson  v.  Thompson,  Webs.  Pat.  Cas.  278,  286. 
'  Ibid. 
'  Ibid. 

*  Neilson  v.  Fothergill,  Webs.  Pat.  Cas.  287,  289,  290.     See  further  as 
to  injunctions  against  licensees,  post. 

•  Losh  V.  Hague,  Webs.  Pat.  Cas.  200.     Sir  L.  Shadvvell,  V.  C.  —  "  It 


REMEDY    IN    EQ,U1TY    TO    RESTRAIN    INFRINGEMENTS.         377 

*§.  336.  Third.  The  third  class  of  cases  is  where  the  ques- 
tion of  granting  the  injunction  comes  on  upon  the  final  hearing; 
and  here,  the  situation  of  the  parties  is  entirely  different  from 
the  state  of  things  on  an  interlocutory  motion.  The  object  of 
a  bill  in  equity  to  protect  a  patent  is  a  perpetual  injunction  ;  and 
this  in  general  can  only  be  granted  at  the  hearing  ;  and  if  granted 
at  the  hearing,  it  will  necessarily  be  perpetual.  Objections 
raised  by  the  defendant,  therefore,  to  the  validity  of  the  patent, 
at  the  hearing,  require  a  very  different  consideration  from  the 
court ;  because  the  question  is,  whether  the  court  will  give  any 
assistance  to  a  party,  who  might  have  applied  for  an  interlocu- 
tory hearing,  and  so  have  given  the  defendant  an  opportunity 
to  have  had  the  legal  title  investigated,  but  has  not  done  so.  In 
such  cases,  where  there  are  no  circumstances  shown  which 
would  have  prevented  the  plaintiff  from  asking  for  an  injunc- 
tion in  the  progress  of  the  cause,  it  will  not  only  not  be  granted 
at  the  hearing,  but  the  bill  will  be  dismissed  with  costs,  if  it  has 
been  pending  for  a  long  time,  and  the  answer  had  denied  the 
validity  of  the  patent  and  the  fact  of  infringement.^ 

really  seems  to  me  that  this  is  a  ease  in  which  I  must  grant  the  injunction, 
because,  as  I  understand  it,  the  wheels  that  the  defendant  has  made  are  cer- 
tainly wheels  made  according  to  that  thing  for  which,  as  I  understand  it,  the 
plaintiff  has  taken  out  his  patent, — the  substance  of  part  of  the  patent 
being  for  making  wheels  that  shall  have  the  spoke  and  the  felloe  in  parts  of 
the  same  piece,  that  is,  in  other  words,  the  spoke  is  to  be  made  with  an  elbow 
bend,  which  elbow  bend  will  constitute  a  part  of  the  felloes.  Now  it  seems 
to  me  that  there  can  be  no  question,  but  that  the  wheels  complained  of  as 
having  been  made  by  the  defendant,  do  answer  the  description  of  the  plain- 
tiff's wheels,  and  I  do  not  think  it  enough  on  a  question  of  injunction,  for 
the  defendant  to  say  why  he  has  done  the  thing  complained  of,  but  will  not 
do  it  again.  That  is  not  the  point,  because  if  a  threat  had  been  used,  and 
the  defendant  revokes  the  threat,  that  I  can  understand  as  making  the  plain- 
tiff satisfied  ;  but  if  once  the  thing  complained  of  has  been  done,  I  appre- 
hend this  court  interferes,  notwithstanding  any  promise  the  defendant  may 
make  not  to  do  the  same  thing  again." 

•  Bacon  v.  Jones,  4  M.  &  Cr.  433.     In  this  case,  Lord  Cottenham  said, 
'•Generally   speaking,   a  plaintiff  who  brings   his   cause   to   a  hearing  is 
expected  to  bring  it  on  in  such  a  state  as  will  enable  the  court  to  adjudicate 
32* 


378  LAW     OF     PATENTS. 

<§,  337.  The  next  question  is,  supposing  that  an  injunction  is 
not  to  be  granted  simpliciter,  what  course  is  to  be  taken.     This 


upon  it,  and  not  in  a  state  in  which  the  only  course  open  is  to  suspend  any 
adjudication  until  the  party  has  had  an  opportunity  of  establishing  his  title 
by  proceedings  before  another  tribunal.  And  I  think  the  court  would  take  a 
very  improper  course,  if  it  were  to  listen  to  a  plaintiff  who  comes  forward 
at  the  hearing,  and  asks  to  have  his  title  put  in  a  train  for  investigation, 
without  stating  any  satisfactory  reason  why  he  did  not  make  the  application 
at  an  earlier  stage.  When  he  comes  forward  upon  an  interlocutory  motion, 
the  court  puts  the  parties  in  the  way  of  having  their  legal  title  investigated 
and  ascertained  ;  but  when  a  plaintiff  has  neglected  to  avail  himself  of  the 
opportunity  thus  afforded,  it  becomes  a  mere  question  of  discretion,  how  far 
the  court  will  assist  him  at  the  hearing,  or  whether  it  will  then  assist  him 
at  all. 

If,  indeed,  any  circumstances  had  occurred  to  deprive  him  of  that  oppor- 
tunity in  the  progress  of  the  cause,  the  question  might  have  been  different. 
But  in  this  case  I  have  not  heard  any  reason  suggested  why  the  plain  and 
ordinary  course  was  not  taken  by  the  plaintiffs,  of  previously  establishing 
their  right  at  law.  They  might  have  brought  their  action  before  filing  the 
bill,  or  they  might,  after  the  bill  was  on  the  file,  have  had  their  right  put  in 
a  train  for  trial.  Instead  of  that,  they  have  allowed  the  suit  to  remain  per- 
fectly useless  to  them  for  the  last  four  years.  They  knew  of  the  alleged 
infringement  in  the  month  of  August,  1835  ;  and  from  that  time  till  the 
hearing  there  was  no  moment  at  which  they  might  not,  by  applying  to  the 
court,  have  had  liberty  to  bring  an  action  to  establish  their  title  at  law. 

It  is  obvious  that  such  a  line  of  proceeding  exposes  a  defendant  to  incon- 
veniences which  are  by  no  means  necessary  for  the  protection  of  the  plain- 
tiff. It  is  no  trifling  grievance  to  have  a  chancery  suit  hanging  over  him  for 
four  years,  in  which,  if  the  court  shall  so  determine  at  the  hearing,  he  will 
have  to  account  for  all  the  profits  he  has  been  making  during  the  intermedi- 
ate period.  Is  a  defendant  to  be  subject  to  this  annoyance  without  any  abso- 
lute necessity,  or  even  any  proportionate  advantage  to  his  adversary,  and 
without  that  adversary  being  able  to  show  any  reason  why  he  did  not  apply 
at  an  earlier  time.  It  appears  to  me  that  it  would  be  very  injurious  to  sanc- 
tion such  a  practice,  more  especially  when  I  can  find  no  case  in  which  the 
court  has  thought  it  right  to  retain  a  bill,  simply  for  the  purpose  of  enabling 
a  plaintiff  to  do  that  which  these  plaintiffs  might  have  done  at  any  time 
within  the  last  four  years. 

It  was  much  more  regular  and  proper  that  the  plaintiffs  should  have  taken 
steps  for  putting  the  legal  right  in  a  course  of  trial.  Those  steps  they  have 
not  chosen  to  take,  and  it  is  now  impossible  to  put  the  defendants  in  the 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.        379 

part  of  the  subject  embraces  the  cases  where  the  plaintiff  will 
be  sent  to  try  his  title  at  law,  without  an  injunction ;  and  the 
cases  where  an  injunction  will  be  granted,  but  the  plaintiff  will 
be  required  to  establish  his  patent  at  law.  The  plaintiff  will  be 
sent  to  a  court  of  law,  to  establish  the  validity  of  his  patent 
without  a  previous  injunction,  if  he  does  not  show  long  posses- 
sion and  exercise  of  his  exclusive  right,  where  the  injunction  is 
resisted  by  evidence  which  casts  doubt  on  the  originality  of 
his  invention,  or  on  the  question  of  infringement,  or  where 
the  patent  contains  gross  and  obvious  defects.^ 

4>  338.  With  regard  to  the  length  of  time  during  which  posses- 
sion and  exercise  of  the  exclusive  right  must  be  shown,  it  does  not 
appear  that  any  specific  lapse  of  time  has  been  adopted  as  a  stand- 
ard ;  and,  indeed,  it  is  manifest  that  no  positive  rule  can  be  assumed, 
applicable  to  all  cases.  The  general  principle  is,  as  we  have 
seen,  that  the  time  elapsed  between  the  granting  of  the  patent 
and  the  application  for  an  injunction  must  have  been  sufficient, 
to  have  permitted  articles  or  machines,  to  be  constructed  by  the 
patentee  in  conformity  with  his  claim,  and  to  be  sold  publicly 
and  repeatedly.^     It  must  also  appear,  that  the  thing  has  in  fact 


same  position  in  which  they  would  have  stood  if  such  a  course  had  been 
originally  adopted. 

For  these  reasons,  I  am  of  opinion,  that  the  Master  of  the  Rolls,  finding 
that  the  evidence  in  the  cause  was  not  such  as  he  could  act  upon  with  safety, 
came,  in  the  exercise  of  his  discretion,  to  a  sound  conclusion,  when  he 
refused  to  grant  the  injunction  or  retain  this  bill. 

I  have  purposely  abstained  from  saying  any  thing  as  to  the  legal  rights  of 
the  parties,  because  I  do  not  think  the  case  in  such  a  state  as  to  enable  me 
to  adjudicate  upon  it. 

The  appeal  must  be  dismissed  with  costs." 

»  Hovey  V.  Stevens,  1  Woodb.  &  M.  290;  Ogle  v.  Ege,  4  Wash.  584  ; 
Collard  v.  Allison,  4  M.  &  C.  488 ;  Morgan  v.  Seaward,  Webs.  Pat.  Cas. 
167.  By  defects  is  to  be  understood  such  as  raise  doubts  as  to  the  merits  — 
that  is,  the  originality  or  usefulness  of  the  patent,  or  the  patentee's  own 
error  in  the  specification.  Woodworth  v.  Hall,  1  Woodb.  &  M.  400.  As 
to  defects  arising  from  the  acts  of  public  officers,  see  fost. 

*  See  the  observations  of  the  court,  cited  ante,  from  Orr  v.  Littlefield,  1 
Woodb.  &  M.  13,  17. 


380  I'AW  OF  PATENTS. 

been  sold  publicly,  if  that  is  the  kind  of  possession  relied  on ;  ^ 
and  where  the  proof  of  possession  consists  of  former  recoveries, 
or  licenses  granted  to  parties  who  have  been  sued  and  have  sub- 
mitted, if  it  appears  doubtful  whether  such  recoveries  and  sub- 
missions were  not  collusively  obtained,  the  necessary  kind  of 
possession  will  not  be  made  out,  and  the  right  will  first  have  to 
be  tried  at  law.-  But  it  does  not  impair  the  effect  of  such 
recoveries  or  submissions,  that  they  were  obtained  by  agree- 
ment and  without  trial,  if  there  was  at  first  a  real  contest.^ 

>§>  339.  Where,  however,  former  use  or  former  recoveries  are 
relied  upon,  as  proof  of  the  possession  of  the  exclusive  right, 
they  must  have  been  under  the  same  patent,  or  under  a  patent 
connected  in  law  with  that  under  which  the  application  is 
made  ;  otherwise  it  will  not  appear  that  they  related  to  the 
same  right.'*  But  under  our  system  of  amending  specifications, 
or  of  surrendering  an  old  patent  and  taking  out  a  new  one  on 
account  of  informalities,  the  right  in  contemplation  of  law 
remains  the  same,  after  the  issue  of  the  new  patent,  if  it  is  in 


•  Ibid.    Hovey  v.  Stevens,  1  W.  &  M.  290,  303. 

«  Collard  V.  Allison,  4  M.  &  Cr.  487,  488  ;  Kay  v.  Marshall,  1  M.  &  Cr. 
373;  Orr  v.  Badger,  10  Law  Reporter,  465;  Orr  v.  Littlefield,  1  W.  &  M. 
13,  17,  18. 

3  Orr  V.  Littlefield,  1  W.  &  M.  13,  17,  18 ;  Orr  v.  Badger,  10  Law  Rep, 
465.  In  Neilson  v.  Thompson,  Webs.  Pat.  Gas.  275,  276,  the  plaintiff's 
solicitor  proved  the  preparation  and  granting  of  fifty  or  sixty  licenses,  and 
also  various  infringements  by  parties  who  submitted  and  took  a  license  on 
proceedings  being  commenced  against  them.  Sir  L.  Shadwell,  V.  C,  said, 
"  It  seems  to  me,  on  these  affidavits,  that  it  is  sufficiently  made  out  that 
there  has  been  a  use  of  the  patent  in  this  sense,  that  the  right  of  the  patentee 
to  the  benefit  of  the  patent  has  been  submitted  to  where  there  has  been  a 
contest,  and  it  does  not  at  all  appear  to  me  that  the  general  way  in  which  the 
defendants  on  their  affidavit  state  the  mode  by  means  of  which  the  plaintiffs 
succeeded  in  establishing  the  patent  is  at  all  an  answer  to  the  two  cases 
which  are  stated  in  Mr.  Blunt's  affidavit.  Then  I  have  the  case  of  a  patent 
having  been  obtained  in  the  year  1828,  and  actually  enjoyed  by  the  patentee 
for  upwards  of  twelve  years." 

*  Hovey  v.  Stevens,  1  W.  &  M.  290. 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.       381 

fact  for  the  same  invention  ;  and  consequently  a  former  posses- 
sion under  the  old  patent  will  be  ground  for  granting  an  injunc- 
tion, without  a  previous  trial,  under  the  amended  patent.^ 
Usually,  where  an  injunction  is  not  granted,  but  the  plaintiff  is 
required  to  establish  his  title  at  law,  the  defendant  will  be 
ordered  to  keep  an  account  until  the  question  is  determined.^ 
It  seems,  that  where  both  parties  claim  under  patents,  the  court 
cannot  grant  an  injunction  until  the  rights  have  been  tried  at  law.^ 

<§.  339.  a.  The  cases  where  an  injunction  will  be  granted,  but 
the  plaintiff  will  be  required  to  establish  his  patent  at  law,  do 
not  admit  of  any  very  precise  classification  under  a  distinct  rule. 
The  court  must  exercise  its  discretion  upon  the  circumstances.'* 

*  Orr  V.  Badger,  10  Law  R.  465. 
^  See  Post,  as  to  the  account. 

'  This  was  held  in  Baskett  v.  Cunningham,  2  Eden's  Ch.  R.  137,  in  rela- 
tion to  two  conflicting  patents  for  the  printing  of  Bibles;  and  it  has  not  been 
overruled  by  any  subsequent  case.  Nor  can  it  well  be  overruled,  for  where 
there  are  two  conflicting  patents,  apparently  for  the  same  thing,  the  grounds 
of  undisturbed  possession  on  which  injunctions  are  granted  cannot  exist. 

*  In  Harmer  v.  Plane,  14  Ves.  130,  131,  Lord  Eldon  thus  explained  the 
grounds  on  which  an  injunction  should  be  granted,  in  cases  where  there  is 
so  much  doubt  as  to  require  further  investigation.  "The  ground  upon 
which,  where  doubt  is  excited  in  the  mind  of  the  court,  an  injunction  is 
granted,  until  the  legal  question  can  be  tried,  a  ground  that  was  acted  upon  in 
the  case  of  Boulton  v.  Watt,  (Boulton  v.  Bull,  2  Hen.  Black.  453  ;  3  Ves. 
140;  Hornblower  v.  Boulton,  8  Term  Rep.  95;  Hill  v.  Thompson,  3  Mer. 
622,)  in  some  cases  preceding  that,  and  some  that  have  occurred  since,  is 
this  :  where  the  crown  on  behalf  of  the  public  grants  letters-patent,  the 
grantee,  entering  into  a  contract  with  the  crown,  the  benefit  of  which  con- 
tract the  public  are  to  have,  and  the  public  have  permitted  a  reasonably  long 
and  undisputed  possession  under  color  of  the  patent,  the  court  has  thought, 
upon  the  fact  of  that  possession,  proved  against  the  public,  that  there  is  less 
inconvenience  in  granting  the  injunction  until  the  legal  question  can  be  tried, 
than  in  dissolving  it  at  the  hazard,  that  the  grant  of  the  crown  may  in  the 
result  prove  to  have  been  valid.  The  question  is  not  really  between  the 
parties  on  the  record  ;  for,  unless  the  injunction  is  granted,  any  person  might 
violate  the  patent;  and  the  consequence  would  be  that  the  patentee  must  be 
ruined  by  litigation.  In  the  case  of  Boulton  and  Watt,  therefore,  though  a 
case  of  great  doubt,  upon  which  some  of  the  ablest  judges  in  Westminster 


382  LAW    OF    PATENTS. 

If  the  plaintiff  has,  by  proof  of  possession  and  enjoyment, 
made  out  a  prima  facie  case  for  an  injunction,  it  will  then  be  for 
the  court  to  consider  whether  the  nature  of  the  case  entitles 
the  defendant  to  a  farther  investigation  into  the  validity  of  the 
patent  or  into  the  fact  of  infringement.  The  defendant  will 
have  a  right  to  farther  investigation,  if  he  shows  that  there  are 
any  questions  of  fact  or  of  law,  which  a  court  of  equity  does 
not  ordinarily  undertake  to  settle  ;  and  this  investigation  will 
generally  be  ordered  to  take  place  in  an  action  at  law,  although 
it  is  competent  for  the  court  to  direct  an  issue  out  of  chancery.^ 


Hall  disagreed,  yet  upon  the  ground  of  the  possession  by  the  patentees  against 
all  mankind,  the  injunction  was  granted,  until  the  question  could  be  tried  ; 
and  the  result  of  the  trial,  being  in  favor  of  the  patent,  proved  that  the  con- 
duct of  the  court  in  that  instance  was  at  least  fortunate. 

The  first  of  these  patents,  granted  in  the  27th  year  of  his  present  majesty, 
is  expired  ;  and  the  patent  for  the  improvements  was  granted  in  the  34th 
Geo.  III.  The  agreement,  entered  into  by  this  defendant,  for  a  license  to 
work  under  the  patentee  would  not  bind  the  defendant.  If  the  plaintiff 
could  not  legally  grant  that  license,  there  was  no  consideration ;  and  the 
question  between  them,  therefore,  is  entirely  open.  Siill,  however,  the 
patentee  has  had  possession  against  all  the  world ;  and  if  he  can  maintain  its 
validity  by  a  due  performance  of  the  condition  as  to  enrolment  of  the  speci- 
fication, by  dissolving  the  injunction  in  the  meantime,  I  should  act  both 
against  principle  and  practice ;  not  only  enabling  this  defendant  against  law 
to  exercise  a  right  in  opposition  to  the  patent ;  but  also  encouraging  all  man- 
kind to  take  the  same  liberty." 

'  Harmer  v.  Plane,  14  Ves.  130,  131  ;  Hill  v.  Thompson,  3  Meriv.  622, 
630;  Wilson  v.  Tindal,  Webs.  Pat.  Cas.  730,  note.  In  this  case.  Lord 
Langdale,  M.  R.  said,  "Having  regard  to  the  arguments  on  the  validity  of 
the  patent,  to  the  enjoyment  of  it  by  the  plaintiffs,  and  to  the  evidence  which 
appears  upon  the  affidavits  which  have  been  made  in  this  case,  I  am  of 
opinion  that  the  injunction  which  is  applied  for  ought  to  be  granted. 

The  question  for  consideration  is,  whether  any  terms  ought  to  be  imposed 
upon  the  plaintiffs,  or  whether  any  other  mode  of  investigating  the  facts 
than  that  which  is  adopted  in  the  usual  course  of  proceeding  in  this  court 
ought  to  be  adopted.  It  is  to  be  observed,  that  all  orders  made  on  applica- 
tions of  this  kind,  are  merely  interlocutory  orders  ;  they  do  not  bind  the 
right  between  the  parties.  The  injunction  which  I  have  stated  it  to  be  my 
intention  to  grant,  will  be  an  injunction  only  until  further  order.  It  will  not 
be  a  perpetual  injunction  ;  not  an  injunction  to  continue  during  the  continu- 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.        383 

<§)  340.  A  denial    in  the  answer,  as  to  the  validity  of  the 

ance  of  the  patent.  Notwithstanding  this  order,  the  defendant  may  put  in 
his  answer,  he  may  displace  all  the  affidavits  which  have  been  filed  on  both 
sides.  The  plaintiff  and  the  defendant  may  respectively  proceed  to  evidence, 
they  may  bring  their  cause  on  for  a  hearing,  and  upon  the  heajing  of  the 
cause,  the  whole  case,  the  law  regarding  the  patent,  and  the  facts  which  will 
appear  upon  the  depositions,  will  have  to  be  reconsidered,  and  that  reconsid- 
eration may,  for  any  thing  that  can  be  known  to  the  contrary,  justly  end  in 
a  result  different  from  that  which  I  have  come  to  upon  the  present  occasion. 

The  defendant  having  his  option  to  adopt  this  course  of  proceeding,  has  at 
the  bar  expressed  his  desire  to  have  this  matter  tried  at  law.  If  he  was  left 
merely  to  prosecute  a  scire  facias  for  the  repeal  of  the  patent,  that  would  be 
one  part  of  the  question  which  he  might  in  that  way  try.  But  there  are 
other  questions  subsisting  between  the  parties  regarding  matters  of  fact, 
which  could  not  be  tried  in  that  way. 

Now  it  has  been  stated  by  Lord  Cottenham,  that  he  recollected  no  instance 
in  which  the  court  has  not  adopted  the  course  of  directing  the  trial  of  an 
action  ;  he  has  stated  that  to  be  the  result  of  his  experience.  I  certainly 
am  very  reluctant  to  try  my  own  memory  against  that,  but  I  should  have 
supposed  that  there  were  instances  in  which  that  had  been  done.  It  is  not 
the  right  of  parties  in  every  case  to  have  an  action  tried  in  a  court  of  law, 
it  is  a  question  of  convenience,  and  the  court  is  to  exercise  a  fair  discretion. 
I  have  no  doubt  whatever  of  the  competency  of  this  court  to  grant  an  injunc- 
tion simpliciter.  Neither  had  Lord  Cottenham  any  doubi  of  it.  But  the 
question  is,  whether,  when  there  is  an  opportunity  for  carrying  the  matter 
further,  it  is  not,  on  the  whole,  a  convenient  course  of  proceeding  to  have 
it  tried  before  the  tribunal  which  is  most  proper  for  the  consideration  of  the 
legal  question,  and  by  which  the  facts  can  be  better  investigated  than  they 
can  here.  It  is  not,  therefore,  upon  the  ground  of  any  doubt  as  to  the 
validity  of  the  patent  that  I  make  the  order  which  I  am  about  to  make,  but 
it  is  because  the  nature  of  the  case  entitles  the  defendant  to  a  further  investi- 
gation in  one  form  or  other,  and  the  most  convenient  and  most  effective  mode 
appears  to  me  to  be  that  which  has  been  mentioned,  namely,  by  bringing  an 
action  in  a  court  of  law.  Notwithstanding,  therefore,  the  very  forcible 
arguments  I  have  heard  upon  this  subject,  I  think  I  must  in  this  case,  as  has 
been  done  in  so  many  other  cases,  direct  the  plaintiff  to  bring  an  action  to 
try  this  right,  the  injunction  being  granted  in  the  terms  of  the  notice  of 
motion." 

In  Russell  v.  Barnsley,  Webs.  Pat.  Cas.  472,  Sir  L.  Shadwell,  V.  C, 
said  that  he  did  not  recollect  a  case  where  a  defendant  had  stated  his  wish 
to  try  the  question  at  law,  that  the  court  had  refused  to  give  him  the 
opportunity. 


384  LAW    OF    PATENTS. 

patent,  or  the  fact  of  infringement,  will  be  sufiicient  to  entitle 
the  defendant  to  further  investigation  in  an  action  at  law  ;  but 
it  has  been  held  that,  under  our  system,  if  the  defendant  wishes 
to  try  the  question  of  originality  in  an  issue  out  of  chancery,  he 
must  set  out  in  his  answer  the  names  of  places  and  persons 
where,  and  by  whom  the  invention  had  previously  been  used, 
because  the  Act  of  Congress  peremptorily  requires  notice  of 
these  facts,  in  a  trial  of  this  question  at  law.^ 

§  341.  The  fact  of  the  pendency  of  an  action  against  another 
l)arty  has  been  held  not  to  be  a  sufficient  ground  for  continuing 
an  injunctiofi,  where  the  novelty  of  the  invention  was  denied  in 
the  answer,  without  putting  the  plaintiff  to  bring  an  action 
against  the  new  defendant.- 

§  342.  The  practice  of  the  court  in  dissolving,  reviving,  con- 
tinuing, or  making  final  injunctions,  previously  granted,  is  regu- 
lated, in  general,  by  the  same  rules  as  the  practice  of  granting 
them  in  the  first  instance.  A  motion  to  dissolve  an  injunction 
may  be  made  at  any  time.  If  made  after  a  trial  has  been 
ordered  at  law,  or  while  an  action  at  law  is  pending,  or  while 
the  plaintiff  is  preparing  to  bring  an  action,  the  decision  of  the 
court  will  be  made  upon  the  same  principles  which  governed 
the  granting  of  the  injunction  in  the  first  instance;  that  is  to 
say,  the  defendant  will  not  succeed  in  displacing  the  plaintiffs 
prima  facie  right  to  an  injunction,  merely  by  filing  an  answer, 
or  reading  affidavits  casting  doubts  on  the  validity  of  the  patent, 
provided  the  plaintiff  is  guilty  of  no  unreasonable  delay  in  bring- 
ing on  the  trial  ;  especially,  if  the  plaintiff  adduces  auxiliary 
evidence  in  favor  of  his  right.^ 

'  Orru.  Merrill,  1  Woodb.  &  M.  376,  378.  Qucere,  whether  it  would 
not  be  a  sufficient  compliance  with  the  statute,  if  the  court,  in  directing  an 
issue,  were  to  order  the  defendant  to  file  a  notice  of  the  persons  and  places, 
before  the  issue  is  tried,  without  its  being  contained  in  the  bill. 

*  Russell  V.  Barnsley,  Webs.  Pat.  Cas.  472. 

»  Orr  V.  Merrill,  1   W.  &  M.  376  ;    Orr  v.  Littlefield,  lb.  13  ;    Orr  v. 


REMEDY    IN    Eq,UITY    TO    RESTRAIN    INFRINGEMENTS.         385 

•^  343.  Where  the  motion  to  dissolve  is  made  after  a  trial  at 
law  has  been  had,  the  court  will  have  to  look  at  the  result  of 
that  trial,  and  will  be  governed  by  the  position  in  which  the 
plaintiff's  right  has  been  left.  If  the  proceedings  at  law  are  not 
in  a  state  to  be  regarded  as  final,  the  court  will  choose  to  be 
informed  as  to  the  further  questions  which  remain  to  be  investi- 
gated. If  a  verdict  has  been  rendered  for  the  plaintiff,  but  a 
new  trial  has  been,  or  is  to  be  moved  for,  and  if  the  court  can 
see  that  there  is  a  question  on  which  an  argument  might  be 
addressed  to  the  court  of  law,  which  might  induce  it  to  grant  a 
new  trial,  the  injunction  will  not  be  continued,  as  a  matter  of 
course,  but  the  court  will  endeavor  to  leave  the  parties  in  a  sit- 
uation that  will  produce,  on  the  whole,  the  least  inconvenience, 
having  regard  to  all  the  circumstances  of  their  respective  situa- 
tions.^ 


Badger,  10  Law  Rep.  465.  In  such  cases,  the  injunction  should  be  contin- 
ued to  the  next  term  after  that  at  which  the  suit  at  law  might  be  tried  to  test 
the  title.     Orr  v.  Merrill. 

'  Hill  V.  Thompson,  3  Meriv.  622,  628.  In  this  case,  the  injunction  had 
been  dissolved,  a  trial  at  law  had  resulted  in  a  verdict  for  tiie  plaintiflT,  who 
came  before  the  court  with  a  motion  to  revive  the  injunction.  On  the  part 
of  the  defendants,  it  was  staled  to  be  their  intention  to  move  for  a  new  trial 
at  law,  at  the  next  term,  which  was  as  soon  as  the  motion  could  be  made. 
Lord  Eldon  said  :  "In  this  case,  the  injunction  was  first  granted  upon  the 
strength  of  the  affidavits,  which  were  contradicted,  as  to  their  general  efl'ect, 
in  the  most  material  points,  when  it  afterwards  came  before  the  court  upon 
a  motion  to  dissolve  the  injunction  so  obtained.  Many  topics  were  then 
urged  on  both  sides,  and  fully  discussed  in  argument.  It  was  insisted,  on 
the  part  of  the  plaintiff,  and  the  court  agreed  to  that  position,  that  where  a 
person  has  obtained  a  patent,  and  had  an  exclusive  enjoyment  under  it,  the 
court  will  give  so  much  credit  to  his  apparent  light,  as  to  interpose  imme- 
diately, by  injunction,  to  restrain  the  invasion  of  it,  and  continue  that  inter- 
position until  the  apparent  right  has  been  displaced.  On  the  other  hand,  it 
was  with  equal  truth  stated,  that,  if  a  person  takes  out  a  patent,  as  for  an 
invention,  and  is  unable  to  support  it,  except  upon  the  ground  of  some 
alleged  improvement  in  the  mode  of  applying  that  which  was  previously  in 
use,  and  it  so  becomes  a  serious  question,  both  in  point  of  law  and  of  fact, 
whether  the  patent  is  not  altogether  invalid,  then,  upon  an  application  to 
this  court  for  what  may  be  called  the  extra  relief  which  it  affords  on  a  clear 

33 


386  LAW    OF    PATENTS. 

<§,344.  Sometimes    the    court   will   direct   a   motion  for  an 
injunction  to  stand  over,  when  none  has  been  granted,  until  it 

wriwa/acie  case,  the  court  will  use  its  discretion  ;  and,  if  it  sees  sufficient 
ground  of  doubt,  will  either  dissolve  the  injunction  absolutely,  or  direct  an 
issue,  or  direct  the  party  applying  to  bring  his  action,  after  the  trial  of  which, 
either  he  may  apply  to  revive,  if  successful,  or  else  the  other  party  may 
come  before  the  court,  and  say,  I  have  displaced  all  his  pretensions,  and  am 
entitled  to  have  my  costs  and  the  expenses  I  have  sustained,  by  being 
brought  here  upon  an  allegation  of  right  which  cannot  be  supported.  And 
as,  in  this  instance,  the  court  will  sometimes  add  to  its  more  general  direc- 
tions, that  the  party  against  whom  the  application  is  made,  shall  keep  an 
account  pending  the  discontinuance  of  the  injunction,  in  order  that,  if  it  shall 
finally  turn  out  that  the  plaintiff  has  a  right  to  the  protection  he  seeks, 
amends  may  be  made  for  the  injury  occasioned  by  the  resistance  to  his  just 
demands.  In  his  directions  to  the  jury,  the  judge  has  stated  it  as  the  law  on 
the  subject  of  patents  —  first,  that  the  invention  must  be  novel;  secondly, 
that  it  must  be  useful ;  and  thirdly,  that  the  specification  must  be  intelligible. 
I  will  go  further,  and  say,  that  not  only  must  the  invention  be  novel  and 
useful,  and  the  specification  intelligible,  but  also  that  the  specification  must 
not  attempt  to  cover  more  than  that  which,  being  both  matter  of  actual  dis- 
covery, and  of  useful  discovery,  is  the  only  proper  subject  for  the  protection 
of  a  patent.  And  I  am  compelled  to  add,  that,  if  a  patentee  seeks,  by  specifi- 
cation, any  more  than  he  is  strictly  entitled  to,  his  patent  is  thereby  rendered 
ineffectual,  even  to  the  extent  to  which  he  would  be  otherwise  fairly  entitled. 
On  the  other  hand,  there  may  be  a  valid  patent  for  a  new  combination  of 
materials,  previously  in  use,  for  the  same  purpose,  or  for  a  new  method  of 
applying  such  materials.  But,  in  order  to  its  being  effectual,  the  specifica- 
tion must  clearly  express  that  it  is  in  respect  of  such  new  combination  or 
application,  and  of  that  only,  and  not  lay  claim  to  the  merit  of  original  inven- 
tion in  the  use  of  materials.  If  there  be  a  patent  both  for  a  machine  and  for 
an  improvement  in  the  use  of  it,  and  it  cannot  be  supported  for  the  machine, 
although  it  might  for  the  improvement  merely,  it  is  good  for  nothing  alto- 
gether, on  account  of  its  attempting  to  cover  too  much.  Now,  it  is  contended , 
that  what  is  claimed  by  the  present  patent  is  not  a  novel  invention  ;  that  the 
extraction  of  iron  from  slags  or  cinders  was  previously  known  and  practised; 
that  the  use  of  lime  in  obstructing  'cold  stiort '  was  likewise  known.  But 
to  all  this  it  is  answered,  that  the  patent  is  not  for  the  invention  of  these 
things,  but  for  such  an  application  of  them  as  is  described  in  the  specifica- 
tion. Now,  the  utility  of  the  discovery,  the  intelligibility  of  the  description, 
&c.,  are  all  of  them  matters  of  fact  proper  for  a  jury.  But  whether  or  not 
the  patent  is  defective,  in  attempting  to  cover  too  much,  is  a  question  of  law, 
and  as  such,  to  be  considered  in  all  ways  that  it  is  convenient  for   the  pur- 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.         387 

can  be  ascertained  what  the  result  of  an  application  for  a  new 
trial  is  to  be  ;  and  where  a  rule,  to  show  cause  why  a  new  trial 
should  not  be  had,  had  been  granted,  an  injunction  was  refused, 
it  not  having  been  allowed  before.^ 

poses  of  justice  that  it  should  be  considered.  This  specification  generally 
describes  the  patent  to  be  '  for  improvements  in  the  smelting  and  working  of 
iron ;  '  and  it  then  goes  on  to  describe  the  particulars  in  which  the  alleged 
improvements  consist,  describing  various  proportions  in  the  combination  of 
materials,  and  various  processes  in  the  adhibition  of  them.  The  question  of 
law,  upon  the  whole  matter,  is,  whether  this  is  a  specification  by  which  the 
patentee  claims  the  benefit  of  the  actual  discovery  of  lime  as  a  preventive  of 
'cold  short,'  or,  whether  he  claims  no  more  than  the  invention  of  that  pre- 
cise combination  and  those  peculiar  processes  which  are  described  in  the  spe- 
cification. And,  when  I  see  that  this  question  clearly  arises,  the  only  other 
question  which  remains  is,  whether  I  can  be  so  well  satisfied  with  respect  to 
it  as  to  take  it  for  granted,  that  no  argument  can  prevail  upon  a  court  of  law, 
to  let  that  first  question  be  reconsidered  by  granting  the  motion  for  a  new 
trial.  If  this  be  a  question  of  law,  I  can  have  no  right  whatever  to  take  its 
decision  out  of  the  jurisdiction  of  a  court  of  law,  unless  I  am  convinced  that 
a  court  of  law  must  and  will  consider  the  verdict  of  the  jury  as  final  and  con- 
clusive. But  this  only  brings  it  back  to  the  original  question  ;  and  I  see 
enough  of  difficulty  and  uncertainty  in  the  specification,  and  enough  of 
apparent  repugnance  between  the  specification  and  the  pailent  itself,  to  say 
that  it  is  impossible  I  can  arrive  at  such  a  conclusion  respecting  it,  as  to  be 
satisfied  that  there  is  no  ground  for  granting  a  new  trial.  In  the  order  I 
formerly  pronounced  was  contained  a  direction,  that  the  defendant  should 
keep  an  account  of  iron  produced  by  their  working  in  the  manner  described 
in  the  injunction.  If  the  injunction  is  to  be  now  revived,  the  whole  of  their 
establishment  must  be  discharged  between  this  and  the  fourth,  day  of  next 
term,  when  it  is  intended  to  move  for  a  new  trial,  the  result  of  which  may  be, 
that  the  defendants  have  a  right  to  continue  the  works  ;  to  do  which,  they 
will  then  be  under  the  necessity  of  recommencing  all  their  operations,  and 
making  all  their  preparations  and  arrangements  de  novo.  It  appears  to  me 
that  this  would  be  a  much  greater  inconvenience  than  any  that  can  result 
from  my  refusal,  in  the  present  instance,  to  revive  the  injunction.  My  opin- 
ion, therefore,  is,  that  this  matter  must  stand  over  till  the  fifth  day  of  next 
term,  when  I  may  be  informed  of  the  result  of  the  intended  application  for  a 
new  trial ;  the  account  to  be  taken  in  the  meantime  as  before." 

»  There  is  a  recent  case  where  an  injunction  was  applied  for  and  refused, 
and  the  plaintiff  was  directed  to  bring  an  action,  which  was  tried  and  a  ver- 
dict found  for  the  plaintiff.    The  motion  for  the  injunction  was  then  renewed  ; 


388  LAW    OF    PATENTS. 

«§>345.  This  course  of  proceeding  shows  that  when  a  new 
trial  has  been  or  is  intended  to  be  applied  for,  a  court  of  equity 
will  generally  leave  the  parties  in  the  situation  in  which  they 
stood  before  the  trial.  If  no  injunction  had  been  previously 
granted,  the  court  will  not  increase  the  defendant's  burdens  by 
imposing  one,  as  long  as  the  plaintifTs  right  remains  doubtful  at 
law.  But  if  an  injunction  has  been  granted  and  the  plaintiff 
has  succeeded  at  law,  it  would  seem,  that  the  injunction  ought 
not  to  be  dissolved,  on  the  mere  suggestion  that  there  is  ground 
for  a  new  trial,  unless  the  court  sees  what  Lord  Eldon  called 
"sufficient  ground  of  doubt"  of  the  plaintiff's  right;  but  that 
the  court  will  exercise  its  discretion,  and  if  it  sees  reason  for 
dissolving  the  injunction,  it  will  direct  the  defendant  to  keep  an 
account  pending  the  discontinuance  of  the  injunction,  in  order 
that,  if  it  finally  turns  out  that  the  plaintiff  has  a  valid  patent, 
he  may  receive  amends  for  the  injury  occasioned  by  the  resist- 
ance to  his  just  demands.^  After  a  trial  and  judgment  at  law, 
in  favor  of  the  plaintiff,  the  injunction  will  be  revived  or  granted 
as  matter  of  course.^  How  far  the  court  will  undertake  to  look 
into  the  regularity  of  such  a  judgment,  and  to  determine,  on 
the  suggestion  of  the  defendant,  whether  there  is  probable 
ground  for  a  writ  of  error,  and  therefore  to  suspend  the  injunc- 


but  it  appeared  on  affidavit,  that  a  bill  of  exceptions  had  been  tendered,  and 
that  the  defendants  also  intended  to  move  for  a  new  trial.  The  Lord  Chan- 
cellor directed  the  application  to  stand  over  until  the  result  of  these  pro- 
ceedings should  be  known.  Shortly  afterwards  a  rule  nisi,  for  a  new  trial, 
was  obtained,  and  then  the  motion  for  the  injunction  was  brought  on  again. 
The  Lord  Chancellor  said,  that  under  the  circumstances  in  which  the  case 
stood  at  law,  a  rule  to  show  cause  why  a  new  trial  should  not  be  had,  having 
been  granted  —  he  must  consider  the  legal  title  of  the  parties  as  still  unde- 
cided ;  and  he  therefore  refused  the  application.  Collard  v.  Allison,  4  M.  & 
Cr.  487,  490. 

'  See  the  observations  cited  ante,  from  Hill  v.  Thompson.  See  further 
as  to  ordering  an  account,  post. 

*  Neilson  v.  Harford,  (Cor.  Lord  Lyndhurst  in  1841,)  Webs.  Pat.  Cas. 
373. 


REMEDY     IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.        389 

tion,  is  a  question  which  has  not  arisen  in  this  country ;  but  it 
seems  that  in  England,  the  Lord  Chancellor  has  so  far  enter- 
tained an  application  of  this  kind,  as  to  look  into  the  proceed- 
ings at  law  and  the  grounds  of  the  judgment,  and  to  satisfy 
himself  that  no  good  reason  existed  for  departing  from  the  usual 
course  of  reviving  the  injunction  after  a  judgment  in  favor  of 
the  plaintiff.^ 

*§>  346.  An  important  part  of  the  remedial  process  in  equity 
is  the  account  of  profits  made  by  the  defendant.  Sometimes 
an  account  is  ordered  to  be  kept,  in  lieu  of  granting  or  contin- 
uing an  injunction,  and  it  is  always  ordered  when  the  injunction 
is  made  perpetual,  unless  the  amount  would  be  very  small.  The 
cases  in  which  an  account  is  ordered  to  be  kept  either  with  or 
without  an  injunction,  during  the  pendency  of  an  action  in 
which  the  right  is  to  be  tried,  proceed  upon  the  principle  that 
the  plaintiff  may  turn  out  to  be  entitled  to  the  right,  and  he  is 
more  secure  of  ample  justice  if  the  account  of  the  defendant's 
profits  is  kept  while  he  is  using  the  invention,  than  if  it  were 
deferred  to  be  taken  at  a  future  time,  especially  if  the  defend- 
ant is  left  at  liberty  to  make  new  contracts.^  Such  an  account 
will  be  ordered,  if  the  injunction  is  dissolved  by  reason  of  the 
irreparable  injury  it   would   do  to  the  defendant's   business.^ 


»  Ibid. 

2  Hill  V.  Thompson,  3  Meriv.  626,  631;  Crossley  v.  Derby  Gas  Light 
Company,  Webs.  Pat.  Cas.  119;  Neilson  v.  Fothergill,  Ibid.  290;  Morgan 
V.  Seaward,  Ibid.  168  ;  Bacon  v.  Jones,  4  M.  &  Cr.  436. 

'  Neilson  v.  Thompson,  Webs.  Pat.  Cas.  278,  285.  In  this  case  Lord 
Cottenham  said,  "Nothing  that  took  place  could  preclude  the  defendants 
from  the  right  of  disputing  the  plaintiff's  right  as  a  patentee,  but  they  have 
at  very  considerable  expense,  erected  this  machinery,  and  from  that  time  to 
the  present  have  been  using  it,  the  plaintiff  being  aware  of  it,  at  least  from 
some  time  in  1839,  (the  precise  day  is  not  stated)  and  stood  by  and  permitted 
them  to  do  this.  If  he  is  entitled  as  patentee  it  would  be  extremely  hard 
for  the  court  to  do  any  thing  to  prevent  his  receiving  that  which  he  is  enti- 
tled to  receive,  and  in  expectation  of  which  he  permitted  the  defendants  to 
go  on  with  their  works.  But  on  the  other  hand,  it  would  be  extremely  hard 
33* 


390  LAW     OF     PATENTS. 

<§,  347.  Sometimes,  as  a  further  means  of  doing  justice  between 
the  parties,  upon  the  question  of  infringement,  when  an  action 
at  law  is  to  be  tried,  the  court  will  order  a  mutual  inspection  of 
the  plaintiffs  and  defendant's  works.  The  object  in  so  doing 
is  to  enable  the  parties,  on  the  trial,  to  give  such  evidence  as 


indeed  to  tellthe  defendants  that  they  shall  not  use  the  works,  which,  with  the 
plaintiff's  knowledge,  they  have  prepared  at  a  very  considerable  expense  ; 
and  as  to  telling  them  they  may  go  on  with  the  cold  blast  instead  of  the  hot 
blast,  I  am  told  that  the  difference  between  the  use  of  the  one  and  the  other 
is  an  expense  of  nearly  double,  even  if  it  were  possible  ;  at  all  events  they 
may  sustain  that  loss  in  the  interval  until  the  right  is  tried.     It  seems  to  me 
that  stopping  the  works,   by  injunction,  under  these  circumstances,  is  just 
inverting  the  purpose  for  which  an  injunction  is  used.     An  injunction  is 
used  for  the  purpose  of  preventing  mischief;  this  would  be  using  the  injunc- 
tion for  the  purpose  of  creating  mischief,  because  the  plaintiff  cannot  possi- 
bly be  injured.     All  that  he   asks,  all   that  he  demands,   all   that  he  ever 
expects  from  these  defendants  is  one  shilling  per  ton.     He  has  not  a  right  to 
say  to  them,  you  shall  not  use  this  apparatus;  he  cannot  do  so  after  the 
course  of  conduct  he  has  adopted ;  he  may  no  doubt  say  with  success,  if  he 
is  right,  you  shall  pay  me  that  rent  which  the  others  pay,  and  in  the  expecta- 
tion of  which  I  permitted  you  to  erect  this  machinery.     Therefore,  in  no 
possible  way  can  the  plaintiff  be  prejudiced  ;  but  the  prejudice  to  the  defend- 
ants must  be  very  great  indeed,  if  they  are  for  a  short  period  prevented 
from  using  at  their  furnaces  that  apparatus  which,  with  the  consent  of  the 
plaintiff,  they  have  erected.     The  object,  therefore,  is,  pending  the  question, 
which  I  do  not  mean  to  prejudice  one  way  or  the  other  by  any  thing  I  now 
say,  to  preserve  to  the  parties  the  opportunity  of  trying  the  question,  with 
the  least  possible  injury  to  the  one  party  or  the  other;  and  I  think  the  injunc- 
tion would  be  extremely  prejudicial  to  the  defendants,  and  do  no  possible 
good  to  the  plaintiff  for  the  purpose  for  which  it  may  be  used.     It  may,  by 
operating  as  a  pressure  upon   the  defendants,  produce  a  benefit,  but  that  is 
not  the  object  of  the  court ;  the  object  of  the  court  is  to  preserve  to  each 
party  the  benefit  he  is  entitled  to,  until  the  question  of  right  is  tried,  and  that 
may  be  entirely  secured  by  the  defendants   undertaking  to  keep  an  account, 
not  only  for  the  time  to  come,  but  from  the  time  when  the  connection  first 
commenced,  and  undertaking  to  deal  with  that  account  in  such  a  way  as  the 
court  may  direct  ;  and  if  the  plaintiff  is  entitled,  the  court  will  have  an 
opportunity  of  putting  the  plaintiff  precisely  in  the  situation  in  which  he 
would  have  stood  if  the  question   had  not  arisen.     If  it  shall  turn  out  that 
the  patent  is  not  valid,  the  court  will  deal  with  it  accordingly,  and  that  will, 
I  think,  most  effectually  prevent  all  prejudice." 


REMEDY    IN    EqUITT    TO    RESTRAIN    INFRINGEMENTS.        391 

will  tend  to  prove  or  disprove  the  fact  of  infringement.  For 
this  purpose  inspectors  or  viewers  are  appointed,  under  the 
direction  of  the  court,  who  are  to  be  admitted  as  witnesses  on 
the  trial  at  law.  If  the  parties  do  not  agree  on  the  persons  to 
be  appointed,  the  court  will  appoint  them.^ 

<§>  348.  When  the  validity  of  the  patent  is  fully  established, 
an  account  will  be  ordered  of  all  the  profits  made  by  the 
defendant,  to  be  taken  by  a  master  ;  and  if  the  patent  has 
expired,  the  account  and  the  injunction  will  extend  to  all  the 
articles  piratically  made  during  the  existence  of  the  patent, 
though  some  of  them  may  remain  unsold.- 

<§>  349.  An  injunction  should  not  be  dissolved  merely  on 
account  of  doubts  as  to  the  validity  of  the  patent,  which  arise 
from  objections  to  the  technical  form  or  signature  of  the  letters, 
or  other  acts  or  omissions  of  the  public  officers,  and  not  from 
any  neglect  or  wrong  of  the  patentee.^ 


'  Morgan  v.  Seaward,  Webs.  Pat  Cas.  168;  Russell  v.  Cowley,  Ibid.  457. 
See  these  cases  for  the  decrees  appointing  such  inspectors. 

*  Crossley  v.  Beverley,  Webs.  Pat.  Cas.  119;  Crossley  r.  Derby  Gas 
Light  Company,  Ibid.  119,  120.  In  this  case  a  very  curious  difficulty 
occurred  in  estimating  the  "profits."  The  plaintiff  was  the  owner  of  a 
patent  for  making  gas-meters,  which  the  defendants  had  made,  and  sold  and 
employed  in  their  works.  The  profits  to  be  ascertained  were  the  benefits 
derived  from  the  use  of  the  meters,  in  enabling  the  defendants  to  furnish 
gas  to  their  customers  at  a  lower  rate  than  they  could  have  done  without 
them,  and  so  to  obtain  additional  profits  from  an  increased  consumption.  It 
was  a  case^  therefore,  presenting  the  uncertain  elements  of  profits  made  by 
the  application  of  particular  means,  and  a  just  distribution  of  those  profits  to 
a  particular  agent  employed.  The  case  does  not  furnish  any  principles,  as 
it  is  reported.     See  3  Mylne  &  Cr.  428,  430, 

»  Wood  worth  v.  Hall,  1  Woodb.  &  M.  389,  400.  In  this  case,  Mr.  Jus- 
tice Woodbury  said,  "  Finally,  it  is  contended  that  if  any  doubt  exists  as  to 
the  validity  of  a  patent,  as  some  assuredly  does  here,  as  before  stated,  the 
injunction  should  be  dissolved.  This  may,  with  some  qualification  as  to  the 
matters  connected  with  the  subject,  be  true  in  granting  an  injunction,  as  laid 
down  in  4  Wash.  C.  C.  584,  if  the  doubt  relate  to  the  merits — that  is,  the 


392  LAW     OP    PATENTS. 

«§,  350.  Upon  the  question  of  granting  an  injunction  against 
a  party  who  has  had  the  use  of  the  invention  by  permission 
or  grant  of  the  patentee,  the  doctrine  seems  to  be  this.  A 
party  who  has  had  such  use  of  an  invention,  under  a  contract 
for  an  annual  rent,  or  other  estimated  rate  of  payment,  may 
discontinue  the  payment,  and,  if  he  still  use  the  invention,  the 
patentee  may  sue  him  for  the  rent  due,  or  for  an  infringe- 
ment. If  an  action  is  brought  for  the  rent,  and  the  defend- 
ant is  not  estopped  by  the  terms  of  his  contract  from  denying 
the  validity  of  his  patent,  the  plaintiff  cannot  recover  without 
giving  him  an  opportunity  to  do  so.^  The  same  is  true  under 
an  action  for  the  infringement,  if  the  defendant  is  not  estopped.^ 
Where,  therefore,  a  court  of  equity  -does  not  see  that  the 
defendant  is  estopped  from  denying  the  validity  of  the  patent, 
but  that  he  has  a  right  to  resist  the  patent,  it  will  deal  with  a 


originality  or  usefulness  of  a  patent,  or  a  patentee's  own  error  in  his  speci- 
fication. But,  when  the  objection  relates  to  the  technical  form  or  signature 
of  papers  connected  with  the  letters,  and  the  doubts  arise  from  acts  of  pub- 
lic officers,  and  not  any  neglect  or  wrong  of  the  patentee,  the  position  seems 
to  me  not  sound.  More  especially  should  an  injunction,  once  granted,  not 
be  disturbed  for  such  doubts,  when,  as  in  this  case,  the  term  for  trial  of  the 
merits  is  near  ;  and  the  allowing  such  doubts  to  prevail,  even  to  the  extent 
of  dissolving  an  injunction,  might  not  merely  affect  the  present  patent  and 
present  parties,  but  operate  injuriously  on  all  other  patents  and  parties  where, 
for  the  last  ten  years,  by  a  cotemporaneous  and  continued  construction  of 
the  patent  law,  chief  clerks  have,  under  its  authority,  sighed  patents  or  other 
important  papers  as  acting  commissioner,  in  the  necessary  absence  of  the 
commissioner,  or  made  mistakes  of  a  clerical  character  in  the  form  of  the  let- 
ters. In  my  opinion,  so  far  from  its  being  proper,  under  such  circumstances, 
to  dissolve  an  injunction  for  doubts  on  such  technical  objections,  it  is  rather 
the  duty  of  the  court,  if,  as  here,  mischievous  consequences  are  likely  to  ensue 
to  others  from  interfering,  and  if,  as  here,  legislative  measures  have  been 
recommended  by  the  public  officers,  which  are  pending,  to  remedy  or  obvi- 
ate the  possible  evil  from  any  public  mistakes,  not  to  dissolve  an  injunction 
already  granted,  unless  required  to  do  it  by  imperative  principles  of  law, 
showing  the  letters-patent  to  be  clearly  void." 

•  Hayne  v.  Maltby,  3  T.  R.  438. 

*  As  to  estoppel  and  failure  of  consideration,  see  Bowman  v.  Taylor,  2 
Ad.  &  E.  278,  and  other  cases  collected  in  Webs.  Pat.  Cas.  290,  note. 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.        393 

defendant  who  has  used  under  a  Hcense  or  other  contract,  or 
under  permission,  upon  the  question  of  injunction,  as  it  deals 
with  other  defendants ;  and,  as  we  have  seen,  if  the  bill  which 
prays  for  an  injunction,  also  shows  that  rent  is  due  by  contract, 
the  court  will  order  the  money  to  be  paid  into  court,  to  await 
the  result  of  an  action  at  law.^ 


'  Neilson  v.  Fothergill,  Webs.  Pat.  Cas.  287,  288.  The  bill  showed 
that  the  plaintiffs  had  called  on  the  defendants  for  an  account  of  the  iron 
smelted  by  the  use  of  the  invention,  in  order  to  ascertain  the  sum  due,  and 
that  the  defendants  had  rendered  an  account  in  writing  of  all  the  iron  smelted 
by  them  up  to  the  2d  of  August,  1839,  and  duly  paid  one  shilling  per  ton  on 
the  same  ;  that  the  plaintiff  had  applied  to  the  defendants  for  an  account  of 
the  iron  smelted  since  the  2d  day  of  August,  1839,  and  for  like  payments, 
but  the  defendants  had  refused.  It  appeared  that  the  draft  of  a  license  was 
sent  to  the  defendants,  containing  amongst  others  a  clause  for  revoking  the 
license  upon  the  non-payment  of  the  rent,  and  that  this  license  vjas  kept  ;  that 
the  payments  were  made  in  conformity  to  it,  and  that  the  plaintiffs,  after 
August,  ISZQ ,  revoked  the  license.  An  injunction  had  been  granted,  which 
the  defendants  now  moved  to  discharge.  Lord  Cottenham,  L.  C.  —  "  This 
case  is  deprived  of  those  circumstances  upon  which  I  acted  in  the  other, 
namely,  the  party  who  claims  to  be  patentee  permitting  them  to  incur  expense, 
in  the  expectation  of  being  permitted  to  use  the  furnaces  upon  the  payment 
of  the  rent,  which  is  all  the  plaintiff  requires.  But  here,  all  that  is  accounted 
for,  because  that  was  done  under  a  contract,  and  for  two  years  at  least  the 
party  has  had  the  benefit  of  the  works  which  he  has  so  erected,  and  the 
patentee  has  kept  his  contracts  with  the  defendant ;  he  has  not  interposed 
and  endeavored  to  deprive  them  of  the  benefit  of  their  expenditure.  It  is  the 
act  of  the  manufacturer  which  has  put  an  end  to  this  connection  ;  he  has, 
therefore,  exposed  himself  to  any  degree  of  injury  that  may  arise  from  the 
expenditure  upon  these  works,  and  it  appears  that  there  is  no  answer  to  the 
claim  to  this  rent  from  August,  1839,  to  August,  1840.  I  shall  have  to  con- 
sider, if  your  client  declines  to  escape  from  the  injunction  upon  the  terms  I  pro- 
pose to  him,  whether  the  injunction  should  not  go  in  a  case  which  is  deprived  of 
those  equitable  circumstances  which  induced  me  to  dissolve  it  in  the  others. 
(Wigram  :  Your  lordship  will  give  me  the  benefit  of  the  supposition,  that, 
at  law,  I  have  a  defence  if  the  patent  is  good  for  nothing.)  If  you  can  show 
me  that  there  is  a  real  question  to  try,  the  money  must  be  paid  into  court 
instead  of  being  paid  to  the  parties;  but  at  all  events,  I  do  not  see  how  far 
that  year,  from  August,  1839,  to  August,  1840,  when  you  went  on  under  the 
contract  without  giving  notice  to  determine,  you  can  escape  paying  it,  either 


39'4  LAW     OF     PATENTS. 

■^tSSl.  It  has  been  held  that  in  a  bill  in  equity  for  a  perpetual 
injunction,  it  is  a  good  defence,   that  prior  to  the  granting  of 


into  court  to  abide  the  event  of  the  trial  of  the  question  at  law,  or  paying  it 
to  the  party,  if  there  is  no  question  to  try. 

Wigram,  in  reply.  Your  lordship  said  you  should  consider,  whether, 
since  August,  1840,  we  were  to  be  considered  as  holding  adversely,  and, 
therefore,  whether  liable  or  not  to  pay  for  what  was  gone  by,  we  were  at  all 
events  wrong-doers.  And  then  you  put  me  to  show,  whether  I  could  not 
in  law  defend  myself  for  what  was  said  to  be  due  in  August,  1840.  The 
principle  which  I  have  always  understood  to  govern  cases  of  this  sort  is  this, 
that,  excluding  the  law  of  estoppel,  if  you  go  into  a  court  of  law,  and  can 
show  a  total  failure  of  consideration  for  the  contract,  there  you  may  always 
defend  yourself;  if,  on  the  other  hand,  you  cannot  make  out  a  case  of  total 
failure  of  consideration,  you  are  liable  upon  your  contract,  and  you  may  or 
may  not  have  your  cross  action.  This  is  the  general  principle  in  these  cases, 
subject  to  the  question,  whether  that  which  has  been  done  may  or  may  not 
amount  to  an  estoppel.  The  whole  question  in  the  case  of  Bowman  v.  Tay- 
lor, relied  upon  for  the  plaintiff  was,  whether  or  not  there  could  be  an  estop- 
pel by  recital,  and  it  was  held  that  there  could.  In  Hayne  v.  Maltby,  the 
question  was,  whether  there  was  any  estoppel,  there  being  no  recital  of  the 
plaintiff's  title,  but  only  an  agreement  and  a  covenant  to  pay,  and  the  court 
held  that  there  was  not.  In  that  case  Mr.  Justice  Ashurst  said,  the  plain- 
tiffs use  this  patent  as  a  fraud  on  all  mankind,  and  they  state  it  to  be  an 
invention  of  the  patentee,  when  in  truth  it  was  no  invention  of  his.  The  only 
right  conferred  on  the  defendant  by  the  agreement  was  that  of  using  this 
machine,  which  was  no  more  than  that  which  he  in  common  with  every  other 
subject  has,  without  any  grant  from  the  plaintiff.  That  is  exactly  our  case. 
We  say  that  all  mankind  have  a  right  to  use  it,  but  that  some  people  have 
taken  licenses,  supposing  it  to  be  the  plaintiff's  invention.  On  the  money 
then  being  paid  into  court,  the  injunction  should  be  dissolved. 

Lord  Cottenham,  L.  C. :  — The  case  of  Hayne  v.  Maltby  appears  to  me 
to  come  to  this  —  that  although  a  party  has  dealt  with  the  patentee  and 
has  carried  on  business,  yet  that  he  may  stop,  and  then  the  party  who  claims 
to  be  patentee  cannot  recover  without  giving  the  other  party  the  opportunity 
of  disputing  his  right,  and  that  if  the  defendant  successfully  dispute  his  right, 
that  notwithstanding  he  has  been  dealing  under  a  contract,  it  is  competent  to 
the  defendant  so  to  do.  That  is  exactly  coming  to  the  point  which  I  put, 
whether  at  law,  the  party  was  estopped  from  disputing  the  patentee's  right, 
after  having  once  dealt  with  him  as  the  proprietor  of  that  right:  and  it 
appears  from  the  authority  of  that  case,  and  from  the  other  cases,  that  from 
the  time  of  the  last  payment,  if  the  manufacturer  can  successfully  resist  the 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.         395 

the  patent,  the  inventor  had  allowed  the  invention  to  go  into 
public  use,  without  objection ;  but  that  it  should  be  clearly 
established  by  proof,  that  such  public  use  was  with  the  know- 
ledge and  consent  of  the  inventor.^  This  is  the  same  as  one 
of  the  statute  defences  against  an  action  at  law,  which  may  all 
be  made,  pursuant  to  the  statute,  in  equity,  if  the  defendant 
chooses,  although  the  statute  has  expressly  made  them  defences 
only  in  an  action  at  law. 

<§.  352.  If  the  patentee,  after  obtaining  his  patent,  dedicates 
or  surrenders  it  to  public  use,  or  acquiesces  for  a  long  period  in 
the  public  use  of  his  invention,  without  objection,  he  is  not  enti- 
tled to  the  aid  of  a  court  of  equity  to  protect  it ;  and  such 
acquiescence  may  amount  to  complete  proof  of  a  dedication  or 
surrender  to  the  public.  The  ground  upon  which  a  court  of 
equity  refuses  to  interfere  in  such  cases,  is,  that  by  his  own  con- 
duct the  plaintiff  may  have  led  or  encouraged  the  defendant  to 
make  use  of  his  invention.^ 


patent  right  of  the  party  claiming  the  rent,  that  he  may  do  so  in  answer  to 
an  action  for  the  rent  for  the  use  of  the  patent  during  that  year.  That 
being  so,  I  think  that,  upon  the  money  being  paid  into  court,  that  is 
to  say,  upon  the  amount  of  the  rent  for  that  year  being  paid  into  court,  (if 
required,)  and  the  same  undertaking  being  given  to  account  for  the  sub- 
sequent period,  the  same  order  ought  to  be  made  in  this  case  as  in  the  others. 
There  must  be  an  undertaking  to  deal  with  the  amount  of  that  in  the  same 
way  as  before.  The  great  difSculty  in  this  case,  which,  however,  is  sur- 
mounted in  the  undertaking,  is,  that  the  said  suit  does  not  go  to  that 
year's  rent." 

'  Wyeth  V.  Stone,  1  Story's  R.  273. 

*  Ibid.  In  this  case,  Mr.  Justice  Story  said,  "In  the  next  place,  as  to 
Wyeth's  supposed  abandonment  of  his  invention  to  the  public  since  he 
obtained  his  patent,  I  agree,  that  it  is  quite  competent  for  a  patentee  at  any 
time,  by  overt  acts  or  by  express  dedication,  to  abandon  or  surrender  to  the 
public  for  their  use,  all  the  rights  secured  by  his  patent,  if  such  is  his  pleas- 
ure, clearly  and  deliberately  expressed.  So,  if  for  a  series  of  years,  the 
patentee  acquiesces  without  objection,  in  the  known  public  use  by  others  of 
his  invention,  or  stands  by  and  encourages  such  use,  such  conduct  will  afford 
a  very  strong  presumption  of  such  an  actual  abandonment  or  surrender. 


396  LAW     OF      PATENTS. 

«§,  353.  But  although  it  is  a  principle  of  equity,  that  a  patentee 
must  not  lie  by,  and  by  his   silence    or   acquiescence  induce 


A  furtiori,  the  doctrine  will  apply  to  a  case,  where  the  patentee  has  openly 
encouraged  or  silently  acquiesced  in  such  use  by  the  very  defendants,  whona 
he  afterwards  seeks  to  prohibit  by  injunction  from  any  further  use  ;  for  in 
this  way,  he  may  not  only  mislead  them  into  expenses,  or  acts,  or  contracts, 
against  which  they  might  otherwise  have  guarded  themselves  ;  but  his  con- 
duct operates  as  a  surprise,  if  not  as  a  fraud  upon  them.  At  all  events,  if 
such  a  defence  were  not  a  complete  defence  at  law,  in  a  suit  for  any  infringe- 
ment of  the  patent,  it  would  certainly  furnish  a  clear  and  satisfactory  ground 
why  a  court  of  equity  should  not  interfere  either  to  grant  an  injunction,  or  to 
protect  the  patentee,  or  to  give  any  other  relief.  This  doctrine  is  fully  recog- 
nized in  Rundellt;.  Murray,  (Jacobs's  R.  311,  316,)  and  Saunders  v.  Smith, 
(3  Mylne  &  Craig,  711,  728,  730,  735.)  But  if  there  were  no  authority  on 
the  point,  I  should  not  have  the  slightest  difficulty  in  asserting  the  doctrine, 
as  founded  in  the  very  nature  and  character  of  the  jurisdiction  exercised  by 
courts  of  equity  on  this  and  other  analogous  subjects. 

There  is  certainly  very  strong  evidence  in  the  present  case,  affirmative  of 
such  an  abandonment  or  surrender,  or  at  least  of  a  deliberate  acquiescence 
by  the  patentee  in  the  public  use  of  his  invention  by  some  or  all  of  the 
defendants,  without  objection  for  several  years.  The  patent  was  obtained  in 
1829  ;  and  no  objection  was  made,  and  no  suit  was  brought  against  the 
defendants  for  any  infringement  until  1839,  although  their  use  of  the  inven- 
tion was,  during  a  very  considerable  portion  of  the  intermediate  period,  noto- 
rious and  constant,  and  brought  home  directly  to  the  knowledge  of  the 
patentee.  Upon  this  point  I  need  hardly  do  more  than  refer  to  the  testimony  of 
Stedman  and  Barker,  who  assert  such  knowledge  and  acquiescence  for  a 
long  period,  on  the  part  of  the  patentee,  in  the  use  of  these  ice-cutters  by 
different  persons,  (and  among  others  by  the  defendants,)  on  Fresh  Pond, 
where  the  patentee  himself  cut  his  own  ice.  It  is  no  just  answer  to  the  facts 
so  stated,  that  until  1839,  the  business  of  Wyeth,  or  rather  of  his  assignee, 
the  plaintiff,  Tudor,  was  altogether  limited  to  shipments  in  the  foreign  ice- 
trade,  and  that  the  defendant's  business,  being  confined  to  the  domestic  ice- 
trade,  did  not  interfere  practically  with  his  interest  under  the  patent.  The 
violation  of  the  patent  was  the  same,  and  the  acquiescence  the  same,  when 
the  ice  was  cut  by  Wyeth's  invention,  whether  the  ice  was  afterwards  sold 
abroad,  or  sold  at  home.  Nor  does  it  appear,  that  the  defendants  have  as 
yet  engaged  at  all  in  the  foreign  ice-trade.  It  is  the  acquiescence  in  the 
known  user  by  the  public  without  objection  or  qualification,  and  not  the 
extent  of  the  actual  user,  which  constitutes  the  ground,  upon  which  courts 
of  equity  refuse  an  injunction  in  cases  of  this  sort.     The  acquiescence  in 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.         397 

another  to  go  on  expending  his  money  and  incurring  risk,  and 
afterwards,  if  profit  is  made,  come  and  claim  a  share  in  the 
profit,  without  having  been  exposed  to  share  in  the  losses  ;  yet 
delay  to  institute  his  proceedings  may  be  explained  by  the  diffi- 
culty of  getting  evidence  of  the  infringement.^ 

<§.  354.  It  has  already  been  stated  that  in  all  cases  of  pro- 
ceedings in  equity  to  restrain  the  infringement  of  patents,  in  the 
courts  of  the  United  States,  the  injunction  can,  at  no  time,  be 
applied  for  without  notice  to  the  adverse  party,  giving  him  an 
opportunity  to  oppose  it;  and,  therefore,  the  injunction 'is 
always  special.^     Where  the  injunction  is  applied  for  before  an 


the  public  use,  for  the  domestic  trade,  of  the  plaintiffs  invention  for  cutting 
ice,  admits,  that  the  plaintiff  no  longer  claims  or  insists  upon  an  exclusive 
right  in  the  domestic  trade  under  the  patent ;  and  then  lie  has  no  right  to  ask 
a  court  of  equity  to  restrain  the  public  from  extending  the  use  to  foreign 
trade,  or  for  foreign  purposes.  If  he  means  to  surrender  his  exclusive  right  in 
a  qualified  manner,  or  for  a  qualified  trade,  he  should  at  the  very  time  give 
public  notice  of  the  nature  and  extent  of  his  allowance  of  the  public  use,  so 
that  all  persons  may  be  put  upon  their  guard,  and  not  expose  themselves  to 
losses  or  perils,  which  they  have  no  means  of  knowing  or  averting,  during 
his  general  silence  and  acquiescence. 

The  cases  which  have  been  already  cited,  fully  establish  the  doctrine,  that 
courts  of  equity  constantly  refuse  injunctions,  even  where  the  legal  right  and 
title  of  the  party  are  acknowledged,  when  his  own  conduct  has  led  to  the 
very  act  or  application  of  the  defendants,  of  which  he  complains,  and  for 
which  he  seeks  redress.  And  this  doctrine  is  applied,  not  only  to  the  case 
of  the  particular  conduct  of  the  party  towards  the  persons,  with  whom  the 
controversy  now  exists,  but  also  to  cases  where  his  conduct  with  others  may 
influence  the  court  in  the  exercise  of  its  equitable  jurisdiction.  (Rundell  v. 
Murray,  Jacobs's  R.  311,  316;  Saunders  v.  Smith,  3  Mylne  &  Craig,  711, 
728,  730,  735.)  Under  such  circumstances,  the  court  will  leave  the  party 
to  assert  his  rights,  and  to  get  what  redress  he  may  at  law,  without  giving 
him  any  extraordinary  aid  or  assistance  of  its  own." 

^  Crossley  v.  Derby  Gas  Light  Company,  Webs.  Pat.  Cas.  119,  120.  As 
to  what  would  be  reasonable  time,  in  certain  circumstances,  see  Losh  v. 
Hague,  Webs.  Pat.  Cas.  200,  201. 

*  For  the  distinction  between  common  and  special  injunctions,  see  2  Story's 
Eq.  Jurisp.  ^  892. 

34 


398  LAW    OF    PATENTS. 

answer  has  been  filed,  the  plaintiff,  in  addition  to  the  allegations 
in  his  bill,  must  read  affidavits  to  show  his  title,  and  the  fact  of 
infringement,  especially  if  the  defendant  appears  and  offers  evi- 
dence against  the  one  or  the  other ;  and  these  affidavits  should, 
in  strictness,  cover  the  issuing  of  the  patent,  the  novelty  of  the 
invention,  and  all  other  facts  necessary  to  the  title.^  It  ie 
believed,  however,  that  in  our  practice,  where  the  whole  title  is 
set  out  in  the  bill,  which  is  sworn  to,  if  the  defendant  does  not 
read  affidavits  denying  the  title,  it  is  not  usual  to  read  them  in 
support  of  the  title,  which  is  considered  as  verified  by  the  bill 
itself.  But,  if  the  defendant  attacks  the  title  by  affidavit,  it 
must  be  supported  by  auxiliary  proof  in  addition  to  the  bill,  in 
order  to  make  ont  the  prima  facie  right  to  an  injunction. 

<§»  355.  In  one  of  the  circuit  courts  of  the  United  States  some 
doubt  has  been  thrown  over  the  question,  whether  the  plaintiff 
is  at  liberty  to  read  affidavits  in  support  of  his  title,  after  an 
answer  denying  it.  Mr.  Justice  McLean  has  held  that  on  an 
application  for  an  injunction,  after  an  answer,  the  plaintiff  is  not 
entitled  to  read  affidavits  to  contradict  the  answer  upon  the 
point  of  title.^  Mr.  Justice  Woodbury,  on  the  contrary,  has 
held  that  the  plaintiff  may  show  from  counter  evidence  that  the 
case  is  different  from  that  disclosed  in  the  affidavits,  or  answer 
of  the  defendant;  and  thus  proceed  to  fortify  his  right  to  an 
injunction.^  I  am  inclined,  after  some  examination  of  the  point, 
to  think  that  the  latter  is  the  more  correct  opinion."*     It  is  set- 


'  Daniels  Ch.  Pr.  1890,  1891,  Amer  edit.  1846;  Hindmarch  on  Patents, 
332,  and  cases  cited. 

*  Brooks  D.  Bicknell,  3  McLean,  250,  255. 

'  Orr  V.  Liitlefield,  1  W.  &  M.  13,  19.  See  the  observations  cited  fronn 
this  case,  ante. 

*  If  Mr.  Justice  McLean  is  to  be  understood  to  mean  that  the  plaintiff  is 
not  at  liberty  to  read  affidavits  in  support  of  the  novelty  of  his  invention, 
after  an  answer  denying  it,  it  would  seem  that  the  practice  and  other  author- 
ities are  opposed  to  his  position.  In  the  case  above  cited,  (Brooks  v.  Bick- 
nell,)  the  principal  ground  of  objection  to  the  plaintiff's  title,  was,  that  the 


REMEDY    IN    EQUITY    TO    RESTRAIN    INFRINGEMENTS.        399 

tied,  in  this  circuit,  by  a  decision  referred  to  in  the  note  below, 
by  Mr.  Justice  Story,  that  the  whole  question  of  granting  or  dis- 


patent  had  been  illegally  extended ;  and  the  opinion  does  not  expressly 
affirm  that  the  plaintiff  may  not  adduce  evidence  against  the  answer,  to  sup- 
port the  novelty  of  his  invention,  although  this  is  implied  in  the  observations 
of  the  court.  It  is,  however,  clear,  that  there  is  a  distinction  between  com- 
mon and  special  injunctions  on  this  point.  In  Hill  v.  Thompson,  3  Meriv. 
6-22,  624,  the  leading  case  on  the  subject  of  injunctions  in  patent  causes, 
where  Lord  Eldon  laid  down  the  rules  that  have  since  been  followed  by  all 
judges,  an  injunction  had  been  obtained  until  answer,  or  further  order;  on 
the  coming  in  of  the  answer,  the  defendants  moved  to  dissolve.  The  report 
.  does  not  expressly  state  that  the  answer  denied  the  validity  of  the  patent, 
but  as  this  was  the  only  question  discussed,  it  is  obvious  that  the  answer 
must  have  contained  such  a  denial ;  and  it  appears  that  a  variety  of  affidavits 
were  produced  on  both  sides,  tending  respectively  to  impeach,  and  to  assert 
the  validity  of  the  patent,  and  of  the  injunction  to  restrain  the  breach  of  it; 
and  amongst  them,  wr.s  an  affidavit  by  the  plaintiff  on  the  point  of  novelty. 
The  same  reasons  for  allowing  affidavits  of  title  to  be  read  on  a  motion  for 
dissolving  an  injunction,  apply  to  motions  for  granting  it,  in  the  first  instance, 
where  the  answer  has  been  filed.  Now,  upon  the  practice  of  reading  such 
affidavits  on  a  motion  to  dissolve,  there  has  been  a  considerable  conffict  of 
decisions.  But  a  distinction  was  adopted,  at  a  very  early  period,  with  regard 
to  injunctions  for  restraining  certain  wrongful  acts  of  a  special  nature,  as 
distinguished  from  the  common  injunction  for  staying  proceedings  at  law. 
It  is  the  settled  practice  of  the  court,  in  England,  to  allow  affidavits  to  be 
read,  at  certain  stages,  against  the  answer,  in  cases  of  waste,  and  of  injuries 
in  the  nature  of  waste  ;  but,  in  cases  of  waste,  they  must  be  confined  to  the 
acts  of  waste,  and  the  title,  it  is  said,  must  be  taken  from  the  answer. 
Drewry  on  Injunc.  429;  Gibbs  v.  Cole,  3  P.  Will.  255;  Norway  v.  Rowe, 
19  Ves.  146,  153 ;  Smythe  v.  Sraythe,  1  Swanst.  254,  and  cases  collected 
in  the  note.  The  question  is,  whether  the  same  rule  applies  to  cases  of 
patents,  or,  whether  they  do  not  stand,  in  respect  to  the  admission  of  affida- 
vits on  the  point  of  title,  upon  the  reason  of  the  rule  which  permits  affidavits 
in  cases  of  waste  upon  the  facts  of  waste.  The  ground  of  permitting  affida- 
vits to  be  read  on  the  part  of  the  plaintiff,  in  cases  of  waste,  is,  that  the  mis- 
chief is  irreparable  ;  the  timber,  if  cut,  cannot  be  set  up  again,  so  that  the 
mischief,  if  permitted,  cannot  be  retrieved.  The  same  reason  exists  in 
cases  of  partnership,  by  analogy  to  waste.  Peacock  v.  Peacock,  19  Ves. 
49.  Does  not  this  reason  apply  to  a  denial  of  the  novelty  of  the  plaintiff's 
invention  1  Such  a  denial  in  the  answer,  the  defendant  has  a  right  to  make, 
and  to  have  it  tried  at  law  ;  but  if  the  denial  is  to  be  taken  as  true,  on  a 


400  LAW    OF     PATENTS. 

solving  injunctions,  in  cases  of  irreparable  mischief,  rests  in  the 
sound  discretion  of  the  court,  after  answer,  as  well  as  before. 


motion  to  grant,  or  to  dissolve  an  injunction,  it  may  work  an  irreparable 
mischief  before  the  plaintiff  can  establish  his  right  at  law  ;  and  yet,  this  is  the 
consequence  of  adopting  the  rule,  that,  in  cases  of  patents,  the  title  is  to  be 
taken  from  the  answer,  on  motions  for  an  injunction.  The  court  must  either 
assume  that  the  denial  in  the  answer,  upon  the  point  of  novelty,  is  true,  and, 
therefore,  the  plaintiff  cannot  have  an  injunction  in  any  case,  of  however  long 
possession,  where  the  defendant  chooses  to  make  this  denial  ;  or  it  must  say, 
that,  however  strong  the  denial  in  the  answer,  the  plaintiff  shall  always  have 
his  injunction  ;  or  it  must  look  into  the  evidence  on  both  sides  sufficiently  to 
determine  whether  it  is  probable  that  the  plaintiff  will  be  able  to  establish  his 
patent,  and  grant  or  withhold  the  injunction  accordingly.  The  latter  was  the 
course  taken  by  Mr.  Justice  Woodbury,  in  Orrv.  Littlefield,  where,  however, 
an  answer  had  not  been  filed,  the  defendant  relying  on  affidavits;  but  the  rea- 
soning of  the  learned  judge  makes  the  same  course  applicable  to  cases  where 
the  equity  of  the  bill  is  denied  by  the  answer.  See  the  observations  of  the 
court,  cited  ante,  p.  372.  There  is  a  dictum  of  Lord  Langdale,  M.  R.  in 
Wilson  V.  Tindal,  Webs.  Pat.  Cas.  730,  (cited  ante,  p.  382) ;  that  "  not- 
withstanding this  order  (the  injunction)  the  defendant  may  put  in  his  answer, 
he  may  displace  all  the  affidavits  which  have  been  filed  on  both  sides." 
This  I  conceive  to  mean  merely,  that  the  defendant  may  show  such  a  case 
in  his  answer,  as  to  control  ihe  frima facie  case  made  by  the  plaintiff;  and 
not  that  the  answer  necessarily  displaces  the  affidavits  before  filed.  In 
Poor  V.  Carleton,  3  Sumner,  70,  83,  Mr.  Justice  Story  reviewed  this 
whole  subject,  and  laid  down  the  broad  doctrine  that  the  granting  and 
dissolving  injunctions,  in  cases  of  irreparable  mischief,  rests  in  the  sound 
discretion  of  the  court,  whether  applied  for  before,  or  after  answer ;  and 
that  affidavits  may,  after  answer,  be  read  by  the  plaintiff  to  support  the 
injunction,  as  well  as  by  the  defendant  to  repel  it,  although  the  answer  con- 
tradicts the  substantial  facts  of  the  bill,  and  the  affidavits  of  the  plaintiff  are 
in  contradiction  of  the  answer. 


CHAPTER   IV 


EVIDENCE. 


■§.  356.  The  evidence  appropriate  to  the  different  stages  of  a 
patent  cause  may  be  divided  into  (1)  the  evidence  of  title,  and 
(2)  the  evidence  upon  the  point  of  infringement.  Evidence  of 
title  relates  to  the  letters-patent,  and  the  plaintiff's  interest 
therein,  the  novelty  and  utility  of  the  invention,  and  the 
sufficiency  of  the  specification.  Evidence  of  the  infringement 
relates  to  the  identity  of  the  thing  made,  used,  or  practised  by 
the  defendant,  with  the  invention  of  the  patentee. 

«§,  357.  I.  As  to  the  plaintiff's  title.  With  regard  to  the 
letters-patent,  the  Statute  of  1836,  ^^-^  4,  5,  makes  a  copy  under 
the  seal  of  the  patent  office  and  the  signature  of  the  commis- 
sioner, competent  evidence  that  a  patent  has  been  granted  by 
the  government  for  the  invention  described  in  the  specification 
annexed.  If  the  patent  produced  in  evidence  refers  to  the 
description  in  a  former  patent,  it  is  necessary  to  produce  and 
read  that  former  patent,  in  order  to  show  what  the  invention  is, 
if  it  is  not  made  entirely  clear  and  intelligible  by  the  patent  on 
which  the  action  is  brought.^ 

<^  358.  The  letters-patent  being  thus  proved  to  have  issued, 
they  are  'prima  facie  evidence  that  the  patentee  was  the  first 
inventor  of  the  thing  patented.^     The  reason  upon  which  this 


»  Lewis  V.  Davis,  3  C.  &  P.  502. 

'^  Alden  v.  Dewey,  1  Story's  R.  336 ;  Woodwoilh  v.  Sherman,  3  Story's 
R.  172  ;  Stearns  v.  Barrett,  1  Mason,  153.     It  is  also  held  in  England,  that 
34* 


402  LAW    OF    PATENTS. 

is  held  is,  that  our  statute  requires  the  patentee  to  make  oath 
that  he  is  the  first  and  true  inventor  of  the  thing ;  and  when 
the  patent  has  issued,  supported  by  this  oath,  the  burthen  of 
proof  is  cast  upon  the  party  who  would  object,  to  show  that  the 
grant  has  been  improperly  obtained  by  the  patentee ;  because 
the  law  presumes,  in  the  first  instance,  that  the  patent  has  been 
granted  upon  the  proofs  which  the  statute  requires  to  be  laid 
before  the  officers  of  the  government,  and  that  those  proofs 
were  satisfactory.^ 


the  patent  is  prima  facie  evidence  on  the  part  of  the  person  claiming  the 
right,  that  he  is  so  entitled.     Minter  v.  Wells,  Webs.  Pat.  Cas.  129. 

'  In  the  Philadelphia  and  Trenton  Railroad  Company  v.  Stimpson,   14 
Peters,  458,  Mr.  Justice  Story,  delivering  the  opinion  of  the  Supreme  Court  . 
of  the  United  States,  said,  "Now  the  objection  is,  that  the  present  patent 
does  not  contain  any  recitals  that  the  prerequisites  thus  stated  in  the  act  have 
been  complied  with,  viz.,  that  the  error  in  the  foimer  patent  has  arisen  by 
inadvertency,  accident,  or  mistake,  and  without  any  fraudulent  or  deceptive 
intention  ;  and  that  without  such  recitals,  as  it  is  the  case  of  a  special  author- 
ity, the  patent  is  a  mere  nullity  and  inoperative.     We  are  of  opinion  that  the 
objection  cannot,  in  point  of  law,  be  maintained.     The  patent  was  issued 
under  the  great  seal  of  the  United   States,  and  is  signed  by  the  President, 
and  countersigned  by  the  Secretary  of  State.     It  is  a  presumption  of  law, 
that  all  public  officers,  and  especially  such  high  functionaries,  perform  their 
proper  official  duties  until  the  contrary  is  proved.     And   where,  as  in  the 
present  case,  an  act  is  to  be  done,  a  patent  granted  upon  evidence  and  proofs 
to  be  laid  before  a  public  officer,  upon  which  he  is  to  decide,  the  fact  that  he 
has  done  the  act  or  granted  the  patent,  is  pnOTa/ac/e  evidence  that  the  proofs 
have  been  regularly  made,  and  were  satisfactory.  No  other  tribunal  is  at  liberty 
to  reexamine  or  controvert  the  sufficiency  of  such  proofs,  if  laid  before  him, 
when  the  law  has  made  such  officer  the  proper  judge  of  their  sufficiency  and 
competency.  It  is  not,  then,  necessary  for  the  patent  to  contain  any  recitals  that 
the  prerequisites  to  the  grant  of  it  have  been  duly  complied  with,  for  the  law 
makes  the  presumption  ;  and  if,  indeed,  it  were  otherwise,  the  recitals  would 
not  help  the  case  without  the  auxiliary  proof  that  these  prerequisites  had  been, 
<k  facto,  complied  with.     This  has  been  the  uniform  ftonstruction,  as  far  as 
we  know,  in  all  our  courts  of  justice  upon  matters  of  this  sort.     Patents  for 
lands,  equally  with  patents  for  inventions,   have  been  deemed  prima  facie 
evidence  that  they  were  regularly  granted,  whenever  they  have  been  pro- 
duced under  the  great  seal  of  the  government ;  without  any  recitals  or  proofs 
that  the  prerequisites  under  which  they  have  been  issued  have  been  duly 


EVIDENCE.  403 

<§.  359.  When  the  patentee  wishes  to  strengthen  this  evidence, 
either  in  the  opening  of  his  case,  or  to  rebut  any  evidence 
offered  by  the  defendant  which  may  have  tended  to  show  that 
he  was  not  the  first  inventor,  he  can  only  call  persons  who  were 
in  the  way  of  hearing  of  the  invention  if  it  had  existed  before, 
to  testify  that  they  have  not  heard  of  it.  The  proposition  which 
the  plaintiff  has  to  establish  is,  strictly,  a  negative;  he  is  to 
prove  that  the  invention  did  not  exist  before ;  and,  therefore,  as 
has  been  said,  he  must  proceed  by  exhausting  the  affirmative 
instances  of  it,  by  calling  those  persons  who  might  have  known 
of  it,  if  it  had  existed  before,  but  who  never  have  heard  of  it ;  and 
the  more  those  persons,  from  their  acquaintance  with  the  partic- 
ular trade  or  manufacture,  were  in  the  way  of  hearing  of  or 
meeting  with  it,  the  stronger  the  evidence  will  be.^ 

<§.  360.  Although  this  evidence  is  only  general  and  negative, 
it  is  not,  on  that  account,  without  weight.  To  illustrate  its 
force,  as  well  as  its"  proper  office,  we  may  suppose  a  case,  where 
the  defendant  had  succeeded  in  showing  that  some  prior  inven- 
tor had  made  experiments  in  the  same  line  as  the  patentee,  and 
that  this  evidence  goes  so  far  as  to  show  that  that  person  had 
probably  accomplished  the  same  result  as  the  patentee ;  but  the 
point  is  still  left  in  doubt,  whether  he  had  actually  reached  and 
perfected  the  invention  for  which  the  plaintiff  has  obtained  a 
patent.  The  rule  of  law,  in  such  cases,  is,  that  if  the  prior 
efforts  of  some  preceding  inventor  rested  in  experiment  alone, 
his  experiments,  however  near  they  may  have  been  carried  to 
the  complete  production  of  the  thing,  will  not  prevent  a  subse- 
quent more  successful  inventor,  who  has  produced  the  perfect 
result  at  which  both  may  have  aimed,  from  obtaining  a  valid 

observed.  In  cases  of  patents,  the  courts  of  the  United  States  have  gone 
one  step  further,  and  as  the  patentee  is  required  to  make  oath  that  he  is  the 
true  inventor,  before  he  can  obtain  a  patent,  the  patent  has  been  deemed 
•prima  facie  evidence  that  he  has  made  the  invention." 

'  Cornish  v.  Keene,  Webs.  Pat.  Cas.  503  ;  Galloway  v.  Bleaden,  Ibid. 
526. 


404  LAW    OF    PATENTS. 

patent.  The  question  for  the  jury  will  therefore  be,  in  such 
cases,  whether  the  eflbrts  of  the  prior  inventor  rested  in  experi- 
ment alone,  without  coming  to  the  point  of  completion,  both  in 
the  theory  and  the  actual  application  of  the  invention.  Upon 
this  question,  the  fact  that  the  invention  was  never  heard  of 
until  it  was  known  to  have  proceeded  from  the  present  patentee, 
is  of  great  weight.  If  it  had  been  heard  of  among  those  per- 
sons who  make  it  the  business  of  their  lives  to  know  what  is 
going  on  in  the  particular  trade  or  art  which  it  concerns,  or  to 
know  what  inventions  in  all  arts  or  trades  are  from  time  to  time 
produced,  prior  to  the  time  when  it  was  made  by  the  patentee, 
the  presumption  would  be  very  strong,  that  the  person  who  is 
proved  to  have  made  near  experiments  towards  it  had  actually 
accomplished  the  perfect  result.^  Still  the  evidence  would  not 
be  conclusive,  because  the  report  that  such  an  invention  had 
been  made  might  have  arisen  from  what  had  been  done  in  the 
way  of  experiment  alone.  But  it  would  be  very  strong  pre- 
sumptive evidence  that  the  experiments  had  terminated  success- 
fully, if  persons  who  were  in  the  way  of  hearing  of  such  inven- 
tions should  testify  that  they  had  heard  of  such  an  invention 
having  been  announced,  although  they  had  not  seen  it.  On 
the  other  hand,  if  such  persons  had  not  heard  of  such  an  inven- 
tion, the  evidence  would  not  show  conclusively  that  the  prior 
experiments  rested  in  experiment  alone,  but  it  would  have  a 
very  strong  tendency  to  establish  this  conclusion,  because  there 
is  an  irresistible  tendency  in  inventions  to  become  known,  as 
to  their  results,  if  not  as  to  their  processes,  whenever  the  results 
are  accomplished.^ 


'  If  such  persons  had  seen  the  thing,  no  further  inquiry  would  be  neces- 
sary, for  the  proof  would  be  positive  that  the  thing  existed  before.  But  the 
evidence  we  are  here  considering  relates  merely  to  the  fact  of  such  persons 
having  or  not  heard  of  the  invention,  which  fact,  if  shown  in  the  affirmative, 
of  course  must  be  aided  by  proof  of  its  having  been  made  by  somebody, 
and  would  not  alone  be  conclusive  proof  of  its  actual  previous  existence. 

*  The  case  of  Galloway  v.  Bleaden,  Webs.  Pat.  Cas.  521,  525,  presents 
a  state  of  facts  similar  to  that  which  we  have  supposed  in  the  text.     Two 


EVIDENCE.  405 

<§,  36 1 .  Tliere  is  one  other  species  of  evidence,  applicable  to 
the  issue  of  novelty,  when  the  question  is  as  to  the  time  when 
the  patentee  iiad  completed  his  invention.  It  may  be  neces- 
sary for  the  plaintiff  to  rebut  evidence  offered  by  the  defend- 
ant as  to  the  invention  and  use  of  the  same  thing  by  other  per- 
sons before  the  dale  of  his  patent,  and  hence  it  may  be  impor- 
tant to  show  the  precise  time  when  the  invention  was  completed 
by  the  patentee.  For  this  purpose,  the  patentee  may  give  in 
evidence  his  own  declarations,  as  part  of  the  res  gest<B,  describ- 
ing the  nature  and  objects  of  the  invention,  to  an  extent 
which  has  been  defined  by  the  Supreme  Court  of  the  United 
States.^ 


witnesses  conversant  with  subjects  of  the  description  of  the  patented  inven- 
tion, and  who  devoted  themselves  to  the  knowledge  of  the  inventions  made 
from  week  to  week,  Icstified  that  they  had  not  before  heard  of  such  a  dis- 
covery previous  to  the  issuing  of  the  plaintiffs  patent.  The  court  said  this 
was  enough  to  call  on  the  other  side  to  show  affirmatively,  that  the  inven- 
tion was  not  new,  and  that  it  was  for  the  jury  to  say  whether  the  evidence 
as  to  what  had  been  done  by  the  antecedent  experiments  or  efforts  of  others, 
in  the  way  in  which  it  ought  to  be  understood,  had  brought  their  minds 
to  that  conclusion. 

'  "  In  many  cases  of  inventions,  it  is  hardly  possible  in  any  other  manner 
to  ascertain  the  precise  time  and  exact  origin  of  the  particular  invention. 
The  invention  itself  is  an  intellectual  process  or  operation  ;  and,  like  all  other 
expressions  of  thought,  can  in  many  cases  scarcely  be  made  known,  except 
by  speech.  The  invention  may  be  consummated  and  perfect,  and  may  be 
susceptible  of  complete  description  in  words,  a  month,  or  even  a  year  before 
it  can  be  embodied  in  any  visible  form,  machine,  or  composition  of  matter. 
It  might  take  a  year  to  construct  a^  steamboat,  after  the  inventor  had  com- 
pletely mastered  all  the  details  of  his  invention,  and  had  fully  explained  them 
to  all  the  various  artisans  whom  he  might  employ  to  construct  the  different 
parts  of  the  machinery.  And  yet  from  those  very  details  and  explanations, 
another  ingenious  mechanic  might  be  able  to  constrixct  the  whole  apparatus, 
and  assume  to  himself  the  priority  of  the  invention.  The  conversations  and 
declarations  of  a  patentee,  merely  affirming  that  at  some  former  period  he 
invented  that  particular  machine,  might  well  be  objected  to.  But  his  con- 
versations and  declarations,  stating  that  he  had  made  an  invention,  and 
describing  its  details  and  explaining  its  operations,  are  properly  to  be  deemed 
an  assertion  of  his  right,  at  that  time,  as  an  inventor  to  the  extent  of  the 


406  LAW    OF    PATENTS. 

<§,  362.  Sometimes  the  issue  of  novelty  involves  the  identity 
or  diversity  of  the  thing  patented,  compared  with  something 
before  known  or  used,  on  which  the  defendant  rehes  to  defeat 
the  patent.  The  nature  of  the  evidence  and  the  sources  from 
which  it  is  to  be  drawn,  are  the  same  upon  this  issue  as  when 
the  question  of  identity  or  diversity  arises  under  the  issue 
respecting  an  infringement ;  and  the  consideration  of  tlie  princi- 
ples of  evidence  on  both  of  these  issues  may  here  be!  postponed 
until  we  come  to  the  general  discussion  of  the  question  of 
identity. 

<§>  363.  The  plaintiff  must  also  offer  some  evidence  of  the 
utility  of  his  invention.  The  degree  of  utility,  as  we  have  seen, 
is  not  material ;  but  the  invention  must  be  capable  of  some  use, 
beneficial  to  society.  This  is  ordinarily  proved  by  the  evidence 
of  persons  conversant  with  the  subject,  who  may  be  called  to 
say  whether  the  thing  invented  is  or  is  not  capable  of  the  use 
for  which  it  is  designed,  or  whether  it  is  an  improvement  upon 
what  had  been  in  use  before.  But  it  may  also  be  proved  by 
other  testimony,  which  will  show  that  large  orders  have  been 
given  for  the  article  by  the  public,  or  that  licenses  have  been 
taken  for  the  exercise  of  the  right. 

<§)  364.  The  plaintiff,  in  addition  to  the  prima  facie  evidence 
of  the  novelty  of  his  subject-matter,  must  also  offer  some  proof 
of  the  sufficiency  of  his  specification.  In  other  words,  he  must 
show,  to  use  the  language  of  the  statute,  that  his  specification 
is  "  in  such  full,  clear,  and  exact  terms,  as  to  enable  any  person, 
skilled  in  the  art  or  science  to  which  it  appertains,  to  make,  con- 
facts  and  details  which  he  then  makes  known  ;  although  not  of  their  exist- 
ence at  an  antecedent  time.  In  short,  such  conversations  and  declarations, 
coupled  with  a  description  of  the  nature  and  objects  of  the  invention,  are  to 
be  deemed  a  part  of  the  res  gestcB,  and  legitimate  evidence  that  the  inven- 
tion was  then  known  to  and  claimed  by  him;  and  thus  its  origin  may  be  fixed 
at  least  as  early  as  that  period."  The  Philadelphia  and  Trenton  Railroad 
Company  v.  Stimpson,  14  Peters,  462. 


EVIDENCE.  407 

struct,  compound,  or  use  "  the  thing  patented.  This  may  be 
apparent  to  the  jury  on  the  face  of  the  specification  itself,  from 
its  simplicity  and  the  absence  of  technical  terms  and  descrip- 
tions; but  wiiere  the  invention  is  at  all  complicated,  or  terms  of 
art  or  science  are  made  use  of,  requiring  the  exercise  of  tech- 
nical knowledge,  to  determine  whether  the  specification  is  suffi- 
cient, it  is  at  least  advisable,  if  not  necessary,  for  the  plaintifl', 
in  opening  his  case,  to  give  some  evidence  that  his  specification 
can  be  applied  by  those  to  whom  the  law  suppo-ses  it  to  be 
addressed.  If  the  sufficiency  of  the  specification  is  disputed, 
the  plaintiff  must  go  into  evidence  to  sustain  it.  How  much  of 
this  evidence  may  properly  be  reserved  for  answer  to  the  defend- 
ant's case,  and  how  much  should  be  introduced  in  the  plain- 
tiff's opening,  must  depend  on  the  circumstances  of  the  trial, 
although  it  may  be  stated,  as  a  general  rule,  that  slight  evidence 
of  sufficiency  is  all  that  is  necessary  to  be  offered  at  first,  in 
order  to  make  it  incumbent  on  the  defendant  to  falsify  the  spe- 
cification.^ 

<§>  365.  The  nature  and  source  of  the  evidence,  to  show  the 
sufficiency  of  a  specification,  present  a  topic  of  much  interest, 
under  that  somewhat  difficult  branch  of  the  law  of  evidence 
which  relates  to  experts.  What  is  the  meaning  of  the  statute, 
when  it  refers  to  the  ability  of  persons  "  skilled  in  the  art  or 
science  "  to  which  the  invention  appertains,  "or  with  which  it 
is  most  nearly  connected,"  to  make,  construct,  compound,  and 

'  It  seems  to  be  the  rule  in  England  that  the  plaintiff  must  open  with  some 
evidence  of  the  sufficiency  of  his  specification,  unless  the  defendant  admits 
that  it  was  tried  and  succeeded.  Turner  t?.  Winter,  Webs.  Pat.  Cas.  81  ; 
1  T.  R.  602  ;  Cornish  v.  Keene,  Webs  Pat.  Cas.  503.  And  if  a  whole 
class  of  substances  be  stated  as  suitable,  the  plaintiff  must  show  that  each 
of  them  will  succeed.  Bickford  v.  Hewes,  Ibid.  218.  Under  our  system 
of  pleading,  the  same  rule  should  be  followed.  Although  the  defendant  is 
obliged  to  give  notice  if  he  intends  to  rely  on  the  insufficiency  of  the  speci- 
fication, the  plea  of  not  guilty  puts  the  sufficiency  of  the  specification  in 
issue,  and  the  plaintiff  must  therefore  prove  it  as  one  of  the  things  neces- 
sary to  found  his  action. 


408  LAW    OF     PATENTS. 

use  the  same  ?     Does  it  mean  to  adopt  as  witnesses  those  only 
who  have  the  practical  skill  of  artisans  in  the  art  or  science,  and 
to  make  their  ability  to  understand  and  apply  the  specification 
the  test  of  its  sufficiency,  or  does  it  include  that  higher  class  of 
persons,  who,  from  general  scientific  knowledge,  or  from  a  theo- 
retical acquaintance  with   the  principles  of  the  art  or  science 
involved,  might  be  able   to   teach  an  artisan  or  practical  work- 
man how  to  practise  the  invention  ?     It  is  apparent  that  both  of 
these  classes  of  persons  may  be  within  the  literal  meaning  of  the 
phrase  "  skilled  in   the  art  or  science ;  "  but  the   question  is, 
whether  the  law  contemplates  one  only,  or  both  of  them,  as  the 
proper  witnesses  to  determine  the  sufficiency  of  a  specification. 
It  seems  to  me  very  clear,  that  the  law  means  to  adopt  as  a  gen- 
eral standard  of  the  sufficiency  of  a  specification,  the  ability  of 
skilful  practical  workmen  to  practise   the    invention  from   the 
directions  given  in  the  specifications.     The  standard  of  acquire- 
ment and  knowledge  may  vary  with  the  nature  of  the  subject- 
matter  ;  but  where  the  invention  falls  within  the  province  of  an 
art   or   science,    which    is    practised   by  a   particular   class  of 
mechanics,  operators,   manufacturers,  or  other  workmen,   who 
possess,  and  whose  vocation  it  is  to  apply,  technical  knowledge, 
in  that  particular  branch  of  industry,  the  patent-law  refers  to 
their  capacity  to  take  the  specification  and  carry  out  in  prac- 
tice the  direction  which  it  contains,  without  invention  or  addition 
of  their  own. 

<§.  366.  Thus,  if  the  invention  be  a  pump,  or  of  some 
improvement  in  pumps,  the  question  will  be  whether  a  pump- 
maker  of  ordinary  skill,  could  construct  one  upon  the  plan 
given  in  the  specification,  from  the  directions  given. ^  If 
it  be  a  composition  of  matter,  falling  within  the  art  of  prac- 
tical chemistry,  the  question  on  the  specification  will  be 
whether  its  directions  are  so  clear  and  intelligible,  that  a 
practical  chemist  of  ordinary  skill  could  make   the  compound, 

*  Lamb  v.  Lewis,  1  Mason. 


EVIDENCE.  409 

by  following  out  the  directions.^  If  it  be  a  process,  involving 
the  application  of  a  principle  in  physics  to  a  particular  branch 
of  manufacture,  to  be  carried  into  effect  in  a  particular  manner, 
the  question  will  be  whether  the  directions  if  fairly  followed  out 
by  a  competent  workman,  of  the  class  ordinarily  employed  to 
construct  an  apparatus  of  that  kind,  would  produce  the  effect 
intended.^  This  seems  to  be  the  general  rule,  applicable  to  a 
very  large  proportion  of  the  inventions  which  become  the  sub- 
jects of  patents ;  and  accordingly  it  may  be  stated  as  a  general 
rule  that  the  proper  witnesses  to  determine  on  the  sufficiency  of 
a  specification  are  practical  workmen  of  ordinary  skill,  in  the 
particular  branch  of  industry  to  which  the  patent  relates,  because 
it  is  to  them  that  the  specification  is  supposed  to  be  addressed.^ 

'  Ryan  v.  Goodwin,  3  Sumner,  514. 

*  Neilson  v.  Harford,  Webs.  Pat.  Cas.  371. 

»  Gibson  v.  Brand,  Webs.  Pat.  Cas,  629 ;  Bickford  v.  Skewes,  Ibid.  219  ; 
Arkwright  i>.  Nightingale,  Ibid.  61  ;  Elliott  v.  Aston,  Ibid.  224  ;  Huddart 
t).  Grimshaw,  Ibid.  87  ;  Morgan  v.  Seaward,  Ibid.  174  ;  Neilson  v.  Harford, 
Ibid.  371.  The  following  instructive  charge,  given  by  Alderson  B.  to  the 
jury  in  Morgan  v.  Seaward,  contains  an  elaborate  illustration  of  the  law  on 
this  point  of  intelligibility.  "  I  will  now  begin  with  the  specification.  It 
is  the  duty  of  a  party  who  takes  out  a  patent  to  specify  what  his  invention 
really  is,  and  although  it  is  the  bounden  duty  of  a  jury  to  protect  him  in  the 
fair  exercise  of  his  patent  right,  it  is  of  great  importance  to  the  public,  and 
by  law  it  is  absolutely  necessary,  that  the  patentee  should  state  in  his  speci- 
fication, not  only  the  nature  of  his  invention,  but  how  that  invention  may  be 
carried  into  effect.  Unless  he  be  required  to  do  that,  monopolies  would  be 
given  for  fourteen  years  to  persons  who  would  not  on  their  part  do  what  in 
justice  and  in  law  they  ought  to  do,  slate  fairly  to  the  public  what  their 
invention  is,  in  order  that  oiher  persons  may  know  what  is  the  prohibited 
ground,  and  in  order  that  the  public  may  be  made  acquainted  with  the  means 
by  which  the  invention  is  to  be  carried  into  effect.  That  is  the  fair  premium 
which  the  patentee  pays  for  the  monopoly  he  receives.  The  question  is, 
whether  Mr.  Galloway  has  in  the  specification,  and  which  is  accompanied  by 
a  drawing  which  you  ought  to  take  as  part  of  the  specification,  described 
with  sufficient  clearness  and  distinctness  the  nature  of  his  invention,  and  the 
mode  by  which  it  is  to  be  carried  into  effect.  He  has  described  two  inven- 
tions, and  if  either  of  those  inventions  is  sufficiently  specified,  the  patent 
fails ;  for  if  a  person  runs  the  hazard  of  putting  two  inventions  into  one 
patent,  he  cannot  hold  his  patent,  unless  each  can  be  supported  as  a  separate 
35 


410  LAW     OF     PATENTS. 

<§>  367.  At  the  same  time,  there  may  be  another  class  of  wit- 
patent.  In  order  to  support  each,  the  invention  must  be  useful,  and  must  be 
described  in  the  specification  in  such  a  manner  as  to  lead  people  clearly  to 
know  what  the  invention  is,  and  how  it  is  to  be  carried  into  effect.  That 
doctrine  must  be  applied  to  each  of  the  two  inventions  contained  in  this 
patent,  that  is,  to  the  invention  of  the  steam-engine,  and  the  invention  of  the 
machinery  for  propelling  vessels. 

To  begin  therefore  with  the  steam-engine.  —  Has  Mr.  Galloway  suffi- 
ciently described  it  so  as  to  enable  any  one  to  know  what  he  has  invented, 
and  so  as  to  enable  a  workman  of  competent  skill  to  carry  the  invention 
into  effect]  Mr.  Justice  Biiller,  in  the  case  of  the  King  v.  Arkwright, 
lays  down  as  the  criterion  that  a  man  to  entitle  himself  to  the  benefit 
of  a  patent  of  monopoly  must  disclose  his  secret  and  specify  his  invention 
in  such  a  way  that  others  of  the  same  trade,  who  are  artists,  may  be  taught 
to  do  the  thing  for  which  the  patei^t  is  granted,  by  following  the  directions  of 
the  specification,  without  any  new  invention  or  addition  of  their  own.  That 
is  reasonable  and  proper,  for  people  in  trade  ought  to  be  told  the  manner  in 
which  the  thing  may  be  done  in  respect  of  which  the  patent  is  granted.  — 
Howl  Not  by  themselves  becoming  inventors  of  a  method  of  carrying  it 
into  effect,  but  by  following  the  specification,  without  making  a  new  inven- 
tion, or  making  any  addition  to  the  specification.  If  the  invention  can  only 
be  carried  into  effect  by  persons  setting  themselves  a  problem  to  solve,  then 
they  who  solve  the  problem  become  the  inventors  of  the  method  of  solving 
it,  and  he  who  leaves  persons  to  carry  out  his  invention  by  means  of  that 
application  of  their  understanding,  does  not  teach  them  in  his  specification 
that  which  in  order  to  entitle  him  to  maintain  his  patent  he  should  te^ch 
them,  the  way  of  doing  the  thing,  but  sets  them  a  problem,  which  being 
suggested  to  persons  of  skill,  they  may  be  able  to  solve.  That  is  not  the 
way  in  which  a  specification  ought  to  be  framed.  It  ought  to  be  framed  so 
as  not  to  call  on  a  person  to  have  recourse  to  more  than  those  ordinary 
means  of  knowledge  (not  invention)  which  a  workman  of  competent  skill  in 
his  art  and  trade  may  be  presumed  to  have.  You  may  call  upon  him  to 
exercise  all  the  actual  existing  knowledge  common  to  the  trade,  but  you 
cannot  call  upon  him  to  exercise  any  thing  more.  You  have  no  right  to  call 
upon  him  to  tax  his  ingenuity  or  invention.  Those  are  the  criteria  by  which 
you  ought  to  be  governed,  and  you  ought  to  decide  this  question  according  to 
those  criteria.  You  are  to  apply  those  criteria  to  the  case  now  under  con- 
sideration, and  you  should  apply  them  without  prejudice,  either  one  way  or 
the  other,  for  it  is  a  fair  observation  to  make,  that  both  parlies  here  stand, 
so  far  as  this  objection  is  concerned,  on  a  footing  of  perfect  equality.  The 
public,  on  the  one  hand,  have  a  right  to  expect  and  require  that  the  specifi- 
cation shall  be  fair,  honest,  open,  and  sufficient;  and,  on  the  other  hand,  the 


EVIDENCE.  '  411 

nesses,  of  much  higher  character,  competent  to  be  examined  on 


patentee  should  not  be  tripped  up  by  captious  objections  which  do  not  go  to 
the  merits  of  the  specification.  Now,  applying  those  criteria  to  the  evidence 
in  the  cause,  if  you  shall  think  that  this  invention  has  been  so  specified  that 
any  competent  engineer,  having  the  ordinary  knowledge  which  competent 
engineers  possess,  could  carry  it  into  effect  by  the  application  of  his  skill, 
and  the  use  of  his  previous  knowledge,  without  any  inventions  on  his  part, 
and  that  he  could  do  it  in  the  manner  described  by  the  specification,  and 
from  the  information  disclosed  in  the  specification,  then  the  specification 
v?ould  be  sufficient.  If,  on  the  other  hand,  you  think  that  engineers  of  ordi- 
nary and  competent  skill  would  have  to  set  themselves  a  problem  to  solve, 
and  would  have  to  solve  that  problem  before  they  could  do  it,  then  the  spe- 
cification would  be  bad.v 

'<  Further,  if  a  patentee  is  acquainted  with  any  particular  mode  by  which  his 
invention  may  be  most  conveniently  carried  into  effect,  he  ought  to  state  it 
in  his  specification.  That  was  laid  down  in  a  case  before  Lord  Mansfield. 
There  the  question  arose  on  a  patent  for  steel  trusses.  It  appeared  that  the 
patentee,  in  some  parts  of  his  process,  used  tallow  to  facilitate  the  invention 
for  which  he  had  obtained  a  patent,  and  in  his  specification  he  made  no  men- 
tion of  the  use  of  the  tallow.  The  court  held  the  specification  to  be  bad, 
because,  they  said,  you  ought  not  to  put  people  to  find  out  that  tallow  is 
useful  in  carrying  into  effect  the  invention  of  steel  trusses.  You  ought  to 
tell  the  public  so,  if  that  is  the  best  mode  of  doing  it,  for  you  are  bound  to 
make  a.  bona  Jide  (iiW  aii\d  candid  disclosure.  So  again  in  the  case  of  the 
malt.  That  was  a  patent  for  drying  malt,  and  one  of  the  objections  taken 
was  that  the  patentee  did  not  state  in  his  specification  the  degree  of  heat  to 
which  the  malt  should  be  exposed.  The  argument  there  was  this.  They 
said,  it  appeared  that  the  specification  was  not  sufficient,  inasmuch  as  it  did 
not  describe  the  extent  of  heat  to  which  the  malt  should  be  exposed,  for  it 
only  said,  '  the  proper  degree  of  heat  and  time  of  exposure  will  be  easily 
learned  by  experience,  the  color  of  the  internal  part  of  the  prepared  grain 
affording  the  best  criterion.'  Surely,  there  it  would  have  been  competent  to 
the  patentee  to  say,  any  person  of  ordinary  skill,  in  such  a  business,  would 
be  able  to  judge  what  color  the  malt  ought  to  be,  and  that,  by  experiment, 
he  would  learn  what  degree  of  temperature  was  exhibited  at  the  time  when 
that  proper  degree  of  color  was  obtained  ;  therefore  the  plaintiff  contended 
that  there  was  enough  stated  in  the  specification  to  enable  the  public  to  carry 
the  invention  into  effect,  and  that  the  patent  ought  to  be  supported,  because 
skilful  maltsters  and  skilful  dryers  of  malt  would  easily  know  where  to  stop, 
and  what  degree  of  heat  was  requisite  for  the  purpose.  There  is  no  doubt 
that  when  a  man  was  told  that  a  certain  effect  might  be  produced  upon  the 
malt  by  shaking  it  and  subjecting  it  to  a  certain  degree  of  heat,  his  mind 


412  LAW    OF    PATENTS. 

this  point.     These  are  persons  who  possess  a  thorough  scientific 

would  be  set  on  float ;  he  would  be  at  work  upon  it  to  ascertain  what  that 
degree  of  heat  should  be,  and  he  would  probably  find  it  out.  But  that  is  not 
enough.  The  specification  of  a  patent  must  not  merely  suggest  something 
that  will  set  the  mind  of  an  ingenious  man  at  work,  but  it  must  actually  and 
plainly  set  forth  what  the  invention  is,  and  how  it  is  to  be  carried  into  effect, 
so  as  to  save  a  party  the  trouble  of  making  experiments  and  trials.  The 
court  in  that  case  said,  that  a  specification  that  casts  upon  the  public  the 
expense  and  labor  of  experiments  and  trials,  is  undoubtedly  bad.  Here,  in 
this  case,  the  defendants  take  that  line  of  argument ;  they  say  that  experi- 
ments and  trials  are  necessary.  If  it  be  said  that  all  these  matters  will  be 
well  or  easily  known  to  a  person  of  competent  skill  (and  }.o  such  only  the 
patentee  may  be  allowed  to  address  himself)  then  the  invention  will  not  in 
reality  have  given  any  useful  or  valuable  information  to  the  public. 

"Now,  let  us  apply  the  principle  of  this  case  to  the  present,  and  see 
whether  or  not  the  patentee  here  has  given  that  full  information  by  the  spe- 
cification and  drawing,  which,  being  addressed  to  persons  of  competent  skill 
and  knowledge,  w^ould  enable  them,  from  that  specification  and  drawing,  to 
carry  the  invention  into  effect.  On  that  subject  there  is,  undoubtedly,  con- 
tradictory evidence,  but  you  see  a  specification  is  addressed  to  all  the  world, 
and  therefore  all  the  world,  at  least  those  possessed  of  a  competent  skill, 
ought  to  be  able  to  construct  the  machine  by  following  that  specification.  It 
is  not  fair  to  you  or  to  me,  if  we  happen  to  be  less  inventive  than  our  neigh- 
bors, that  we  should  be  prevented  from  constructing  these  machines,  by  rea- 
son of  the  specification  not  giving  a  clear  exposition  of  the  way  in  which  it  is 
to  be  done.  In  the  case  of  the  steam-engine,  there  was  put  in  on  the  part 
of  the  defendants  a  model,  made,  as  it  was  said,  according  to  the  specifica- 
tion, which  model  would  not  work.  The  model  was  a  copy  of  the  drawing, 
and  would  not  work,  because  one  part  happened  to  be  a  little  too  small, 
whereas,  if  it  had  been  a  little  larger,  it  would  have  worked.  Now  a  work- 
man, of  ordinary  skill,  when  told  to  put  two  things  together,  so  that  they 
should  move,  would  of  course,  by  the  ordinary  knowledge  and  skill  he  pos- 
sesses, make  them  of  sufficient  size  to  move.  There  he  would  have  to  bring 
to  his  assistance  his  knowledge  that  the  size  of  the  parts  is  material  to  the 
working  of  t!ie  machine.  That  is  within  the  ordinary  knowledge  of  every 
workman.  He  says,  '  I  see  this  will  not  work  because  it  is  too  small,'  and 
then  he  makes  it  a  little  larger,  and  finds  it  will  work  :  what  is  required  is, 
that  the  specification  should  be  such  as  to  enable  a  workman  of  ordinary 
skill  to  make  the  machine  ;  with  respect  to  that,  therefore,  I  do  not  appre- 
hend you  will  feel  much  difficulty,  but  with  respect  to  the  other  there  is  a 
good  deal  more  difficulty,  i  will  not  sum  up  the  evidence  upon  the  subject 
of  the  steam-engine,  but  I  will  confine  myself  to  the  second  invention,  and 


EVIDENCE.  413 

knowledge,  of  a  theoretical  nature,  of  the  principles  of  the  art  or 

see  whether  that  can  be  carried  into  effect  by  means  of  the  specification  and 
the  drawings,  for  it  is  to  that  question  that  the  whole  is  directed.  That 
invention  is  in  two  parts  :  first,  he  says,  it  is  an  improvement  on  paddle- 
wheels  for  propelling  vessels,  whereby  the  float-boards  or  paddles  are  made 
to  enter  and  come  out  of  the  water  at  positions  the  best  adapted,  as  far  as 
experiments  have  determined  the  angle,  for  giving  full  effect  to  the  power 
applied.  He  says,  as  far  as  experiments  have  determined  the  angle.  That 
clearly  speaks  of  an  invention  for  enabling  a  party  to  use  paddle-wheels  for 
propelling  vessels,  which  may  be  adjusted  in  such  a  way  as  that  they  may 
enter  and  come  out  of  the  water  in  angles  the  best  adapted  to  give  effect  to 
the  power  of  the*engine,  that  is  to  say,  at  the  angle  a,  if  that  shall  be  the 
best  position  for  giving  full  effect  to  the  power  of  the  engine,  or  at  the  angle 
b,  if  that  shall  hereafter,  by  experiment,  be  determined  to  be  the  proper 
angle.  It  appears,  from  his  statement  here,  that  the  proper  angle  was  a 
matter  of  considerable  doubt  at  that  time  ;  and,  therefore,  he  does  not  pro- 
fess to  set  down  an  individual  angle  as  the  best,  which  appears  to  have  been 
one  of  the  ideas  of  the  defendant,  as  to  the  effect  of  the  plaintiff's  specifi- 
cation. But  he  says,  I  will  give  you  a  method  of  enabling  the  paddle-wheels 
to  enter  and  come  out  of  the  water,  with  the  position  the  best  adapted  for 
giving  full  effect  to  the  power  of  the  engine.  Then,  at  the  end  of  the  speci- 
fication, after  having  described  the  manner  in  which  it  is  to  be  done,  he  says, 
that  his  claim  is  '  for  the  mode  hereinbefore  described  of  giving  the  required 
angle  to  the  paddles,'  (that  is,  any  angle  which  may  be  required  by  the  per- 
son ordering  the  machinery,)  '  by  means  of  the  rods  g,  h,  i,j,  and  k,  the 
bent  stems  marked/,  the  disc  a,  and  the  crank  6.'  Now,  I  do  not  think  that 
means  he  is  to  give  you  a  machine,  the  angle  of  which  may  now  be  a,  and 
now  b,  but  that  if  you  wish  to  have  a  machine,  the  paddles  of  which  shall 
enter  at  angle  a,  which  you  tell  him,  and  go  out  at  angle  b,  which  you  tell 
him,  he  ought  to  be  able  to  construct  a  machine  which  shall  answer  to  your 
order.  That  I  take  to  be  what  the  inventor  says  he  has  enabled  the  public 
to  do  by  means  of  his  specification  and  plan.  He  then  describes  the  inven- 
tion. In  fig.  4,  you  have  the  shape  of  the  stem,  and  a  particular  angle  is 
mentioned,  but  it  is  obvious  that  that  is  not  an  angle  to  which  the  parties  are 
necessarily  to  be  confined.  Then  he  says,  '  g,  h,  i,j,  and  A-,  are  connecting 
rods  attached  at  one  of  their  ends  by  pins  or  bolls,  r,  to  the  bent  stems,/,  of 
the  float-boards,  and  the  other  ends  of  all  these  rods,  excepting  g,  are 
attached  to  the  disc,  a,  by  pins  or  bolts,  s,  as  shown  in  fig.  5.'  The  only 
observation  is,  that  he  gives  no  dimensions  ;  he  fixes  no  points  either  for  the 
centre  of  the  eccentric,  or  for  the  crank  to  which  the  eccentric  centre  is 
attached;  therefore,  if  those  can  only  be  ascertained  by  experiments  subse- 
quently to  be  made,  then  the  specification  is  bad.  The  whole,  in  some 
35* 


414  LAW    OF    PATENTS. 

science  to  which  the  patent  relates,  but  who  do  not,  as  an  habitual 


degree,  turns  upon  the  length  of  the  rods,  and  the  position  of  the  centre  of 
the  eccentric.  The  principle  upon  which  these  parties  proceed,  and  upon 
which  all  the  inventions  in  that  respect  proceed,  is,  that  the  wheel,  with  its 
spokes,  to  which  the  floats  are  attached,  turns  round  on  an  axis,  and  the 
floats  are  made  to  turn  by  means  of  an  eccentric,  and,  therefore,  the  floats 
bend  as  the  wheel  revolves,  and  they  bend,  in  a  particular  manner,  according 
as  the  floats  are  disposed,  and  according  to  the  position  of  the  centre  of  the 
eccentric,  by  which  they  are  regulated.  They  are  regulated  by  means  of  a 
fixed  bar,  which  is  attached  to  the  centre  of  the  eccentric  disc.  The  others 
are  movable  boards,  which  are  attached  apparently  to  the  circumference  of 
that  same  disc,  and  the  whole  is  made  to  revolve  by  the  fixed  bar  being 
attached  to  a  fixed  point  of  the  wheel  itself,  and,  therefore,  the  revolution  of 
the  wheel  forcing  that  fixed  point  round,  turns  round  the  eccentric  disc,  and 
with  it  changes  continually  the  position  of  all  those  rods  which  are  affixed  to 
the  circumference  of  that  disc,  and,  according  to  their  being  on  one  or  the 
other  side  of  that  disc,  they  operate  on  the  respective  float-boards  to  which 
they  are  attached.  All  that  turns  upon  the  position  of  the  eccentric  axis, 
and  the  length  of  the  respective  rods  operating  through  the  medium  of  this 
centre  upon  the  respective  float-boards  ;  now,  the  question  is,  whether,  in 
the  absence  of  any  statement,  as  to  the  dimensions  of  these  difl^erent  parts, 
and  of  any  directions  for  finding  the  centre  of  the  eccentric,  you  think  the 
specification  is  sufficient  or  not,  and  that  must  be  determined  by  the  evidence 
which  has  been  given  by  the  witnesses  on  the  one  side  and  on  the  other. 

"  Now,  gentlemen,  you  cannot  treat  the  actual  picture  which  is  given  in 
the  drawing  as  any  guide  to  the  particular  angle,  or  to  the  particular  position 
of  the  eccentric  ;  and  for  this  simple  reason.  If  that  were  the  criterion,  then 
the  substance  of  the  invention  would  be  the  particular  angle  contained  in  the 
particulur  drawing,  and,  in  order  to  show  an  infringement,  they  ought  to 
have  shown  that  Mr.  Seaward's  wheel  entered  the  water  at  the  same  angle 
as  the  angle  described  by  the  drawing,  and,  therefore,  in  that  case,  you 
would  be  bound  to  find  the  first  issue  for  the  defendant,  namely,  that  there 
was  no  infringement.  If,  however,  you  treat  the  picture  or  the  drawing  as 
only  an  illustration  of  the  invention,  and  not  as  confining  the  invention  to  the 
particular  angle  there  described,  then  you  ought  to  find  in  the  specification 
some  directions,  which  should  enable  you  to  construct  the  machine  in  a  new 
form,  or  you  ought  to  be  satisfied  that,  without  any  instructions,  a  workman 
of  ordinary  and  competent  skill,  and  knowledge,  would  be  able  to  do  it. 
Now,  1  do  not  think  that  Mr.  Carpmael  gives  any  evidence  to  that  point; 
but  Mr.  Brunei  says,  '  I  have  read  the  specification,  and  I  think  I  could  con- 
struct by  it  a  machine  at  any  required  angle  without  difficulty.'  You  see  he 
says,  *  I  think  I  could  construct  by  it  a  machine  at  any  required  angle  with- 


EVIDENCE.  415 

occupation,  devote  themselves  to  the  application  of  those  principles 


out  difficulty  : '  but  whether  Mr.  Brunei  could  do  it  or  not,  is  not  the  point. 
I  dare  say,  Mr.  Brunei,  the  inventor  of  the  block  machinery,  could  invent 
any  thing  of  this  sort,  the  moment  it  was  suggested  to  him,  but  that  is  not 
the  criterion.  The  question  is,  whether  a  man  of  ordinary  knowledge  and 
skill,  bringing  that  ordinary  knowledge  and  skill  to  bear  upon  the  subject, 
would  be  able  to  do  it. 

"Then  the  evidence  of  Mr.  Park  is  much  more  material.  He  says,  'I 
could,  without  any  difficulty,  mal<e  the  machine  so  that  the  paddles  could 
enter  the  water  at  any  angle.'  He  prepared  the  models  which  have  been 
used.  Now,  the  criterion  is,  whether,  at  the  time  when  the  specification 
was  introduced  to  the  world,  Mr.  Park  would  have  been  able  to  construct 
the  machine  with  his  ordinary  knowledge  and  skill,  without  the  peculiar 
knowledge  he  has  since  obtained  upon  the  subject,  from  being  employed  to 
make  the  models  for  Mr.  Morgan,  because  it  would  not  be  at  all  fair  to  allow 
your  verdict  to  be  influenced  by  knowledge  so  acquired  ;  but  he  says,  with 
his  ordinary  knowledge  and  skill,  he  could,  without  difficulty,  construct  a 
wheel,  so  that  the  paddles  should  enter  the  water  at  any  angle.  He  says,  if 
the  diameter  of  the  wheel  is  given,  which  it  is  fair  should  be  given,  and  the 
immersion  of  the  float,  and  that  is  also  fair  to  be  given,  he  could  do  it. 
Those  are  reasonable  data  for  him  to  require,  and  if  with  his  ordinary  skill 
and  knowledge,  and  without  that  peculiar  knowledge  which  he  has  obtained, 
in  consequence  of  his  connection  with  the  plaintiffs,  and  with  this  cause,  he 
could  do  it,  that  would  be  evidence  on  which  you  would  be  entitled  to  place 
reliance.  Then  he  tells  you  how  he  could  do  it  :  now,  I  do  think  it  would 
have  been  a  vast  deal  better  if  the  specification  had  given  us  the  same 
information,  for  that  is  what  a  specification  ought  to  do. 

"  The  specification  ought  to  contain  a  full  description  of  the  way  in  which 
it  is  to  be  done.  The  question  really  is,  whether,  upon  the  whole  evidence, 
you  are  of  opinion  that  the  specification  does  fairly  and  fully  and  properly 
give  to  the  public  that  information  which  the  public  are  entitled  to  receive, 
that  is  to  say,  whether  it  tells  them,  without  having  recourse  to  experiments, 
how  10  do  it,  or  whether  it  even  tells  them  what  is  the  course  their  experi- 
ments ought  to  take  —  to  what  point  their  examinations  and  experiments 
should  be  directed.  He  says,  he  could  do  it  with  the  skill  he  possesses  ; 
and  he  has  described  the  manner  in  which  he  proposes  to  do  it.  He  says, 
'  I  have  seen  this  drawing  ;  '  then  he  produces  a  drawing,  and  he  says, 
'this  represents  my  plan  of  drawing  it.  An  engineer  of  competent  skill 
would  have  no  difficulty  in  doing  it.'  His  doing  it  himself,  I  do  not  consider 
so  material,  but  he  says  an  engineer  of  competent  skill  would  have  no  diffi- 
culty in  doing  it.     That  is  material. 

"  Then,  when  that  drawing  was  shown,  some  of  the  gentlemen  appearing 


416  LAW    OF    PATENTS. 

in  the  practical  exercise  of  that  art,  science,  or  manufacture.    Such 


on  behalf  of  the  defendants  drew  an  angle  upon  it  as  the  angle  of  entering, 
and  asked  him  how  that  could  be  done.  No  doubt  his  principle  would  ena- 
ble him  to  work  out  any  angle,  but  there  are  a  set  of  angles  which  would 
cause  the  centre  of  the  eccentric  to  go  beyond  the  wheel  itself,  which,  there- 
fore, it  is  impossible  to  carry  into  effect,  but  those  angles  are  such  as  would 
not  be  required  in  ordinary  practice  by  any  persons.  You  should  discard, 
on  both  sides,  all  exaggerated  cases,  and  look  to  the  substance  of  the  thing. 
If  you  think,  in  substance,  that  the  information,  really  communicated,  would 
be  enough  in  all  ordinary  cases,  or  in  such  cases  as  are  likely  to  occur,  then 
that  would  do;  but  if  it  is  not  a  clear  statement,  and  if  it  does  not  give  such 
information  as  will  render  it  unnecessary  for  parties  to  make  experiments, 
then  the  specification  would,  in  that  respect,  be  insufficient.  It  is  most 
important  that  patentees  should  be  taught  that  they  are  bound  to  set  out 
'fully  and  fairly  what  their  invention  is,  for,  suppose  a  person  were  to  make 
an  invention,  and  get  a  right  of  making  it  for  fourteen  years,  to  the  exclusion 
of  all  other  persons,  it  would  be  a  very  great  hardship  upon  the  public,  if  he 
were  to  be  allowed  to  state  his  specification  in  such  a  way,  that  at  the  expi- 
ration of  the  term  of  his  patent,  he  might  laugh  at  the  public,  and  say,  I 
have  had  the  benefit  of  my  patent  for  fourteen  years,  but  you,  the  public, 
shall  not  now  carry  my  invention  into  effect,  for  I  have  not  shown  you  how- 
it  is  to  be  done.     I  have  got  my  secret,  and  I  will  keep  it. 

"  Mr.  George  Cottam  says,  '  it  is  a  common  problem  to  find  a  centre  from 
three  given  points,  and  a  person  of  ordinary  engineering  skill  ought  to  be 
able  to  do  that.'  The  question  is,  whether  it  ought  not  to  be  suggested  to 
him  by  the  specification,  that  that  is  the  problem  to  be  solved.  Then  Mr. 
Curtis  says,  '  I  have  made  wheels  on  this  plan.'  You  see  he  made  tlie  two 
wheels  which  were  sent  to  the  Venice  and  Trieste  Company,  but  those  were 
made  under  the  direction  of  Mr.  Galloway,  the  inventor.  Now,  it  somewhat 
detracts  from  the  weight  due  to  his  testimony,  not  as  to  his  respectability, 
but  as  to  the  value  of  his  evidence  to  you,  that  he  had  received  the  verbal 
instructions  of  Mr.  Galloway.  It  may  be,  that  he  could  do  it,  because  of 
his  practice  under  Mr.  Galloway ;  and  it  must  be  recollected  that  people  in 
other  places  would  not  have  that  advantage.  He  says,  he  would  not  have 
any  difl[iculty  in  doing  it ;  and  he  says,  '  I  should  not  consider  my  foreman  a 
competent  workman  unless  he  were  able  to  make  the  wheel  from  the  speci- 
fication and  drawings.'  He  says,  '  I  could  alter  the  angle  by  altering  the 
cranks.'  The  question  is  not,  whether  he  could  do  that,  but  whether  he 
could  alter  the  angle  to  a  particular  angle  by  altering  the  cranks  in  a  partic- 
ular way,  that  is,  whether,  having  the  angle  given  to  him,  he  could  make  the 
alteration  that  was  desired.  Then,  Mr.  Joseph  Clement  says,  he  is  a 
mechanic,  and  did  the  work  of  Mr.  Babbage's  calculating  machine  ;  that  he 


EVIDENCE.  417 

persons  may,  without  doubt,  be  examined  as  to  the  sufficiency 

has  seen  the  model  of  the  steam-engine  and  paddle-wheels.  He  speaks  of 
the  similarity  of  the  plaintiffs' and  defendants'  wheels,  and  says,  'I  could 
make  the  machine  from  the  specification  and  drawing.  The  float  ought  to 
«nter  the  water  at  a  tangent  to  the  epicycloid.'  That  is  only  his  opinion  as 
to  the  most  convenient  angle.  The  real  motion  of  the  boat  is  this.  The 
wheel  keeps  turning  round  and  round  on  its  own  axis ;  during  that  time  the 
boat  has  a  progressive  motion.  The  wheel,  therefore,  has  a  double  motion  ; 
therefore  every  point  of  the  wheel  does  not  move  in  a  circle,  hut  in  a  cycloid, 
that  being  the  curve  described  by  the  rolling  of  a  circle  on  a  flat  surface. 
He  says,  it  should  enter  at  a  tangent,  that  is,  that  the  angle  should  be  such 
that  it  will  enter  the  water  perpendicularly,  in  consequence  of  the  motion  of 
the  boat,  and  of  the  point  of  the  wheel.  He  says,  in  like  manner,  it  ought 
to  go  up.  That  is,  probably,  a  very  correct  view  of  the  case.  He  says,  *I 
should  have  no  difficulty  in  constructing  a  float  to  enter  at  any  angle  ordina- 
rily required.  A  man,  properly  instructed  in  mechanics,  would  have  no 
difliculty  in  doing  it,'  That  is  his  evidence,  which  it  is  material  for  you  to 
consider  ;  and  he  is  a  mechanic  himself. 

"Then,  Henry  Mornay,  a  young  gentleman  in  Mr.  Morgan's  em- 
ployment, where  he  has  been  apparently  studying  the  construction  of 
engines,  speaks  of  a  circumstance  which  does  appear  to  me  to  be  material. 
He  says,  Mr.  Morgan,  in  practice,  makes  his  rods  of  different  lengths.  He 
must  necessarily  do  so,  in  order  that  the  floats  may  follow  at  the  same  angle 
as  that  at  which  the  driving  float  enters  the  water.  The  problem  which  Mr. 
Park  solved,  is  a  problem  applying  to  three  floats  only;  but  it  appears  that 
the  other  floats  will  not  follow  in  the  same  order,  unless  some  adjustment 
of  the  rods  is  made.  Now,  suppose  it  was  to  be  desired  that  the  floats 
should  all  enter  the  water  at  the  given  or  required  angle,  if  one  should  go  in 
at  one  angle,  and  one  at  another,  the  operation  of  the  machine  would  not  be 
uniform  ;  and  the  specification  means  that  the  party  constructing  a  wheel, 
should  be  able  to  make  a  wheel,  the  floats  of  which  shall  all  enter  at  the 
same  angle,  and  all  go  out  at  the  same  angle.  Now,  in  order  in  practice  to 
carry  that  into  effect,  if  there  are  more  than  three  floats,  something  more 
than  Mr.  Park's  problem  would  be  required  ;  and  Mr.  Mornay  says,  actually, 
that  Mr.  Morgan,  in  practice,  makes  his  rods  of  different  lengths,  and  he 
must  neces-sarily  do  that,  in  order  that  the  floats  may  follow  at  the  same 
angle  as  the  driving  float  enters  the  water.  If  so,  he  should  have  said  in  his 
specification,  '  I  make  my  rods  of  different  lengths,  in  order  that  the  rest  of 
my  floats  may  enter  at  the  same  angle  ;  and  the  way  to  do  that  is  so  and  so.' 
Or,  he  might  have  said,  '  it  may  be  determined  so  and  so.'  But  the  specifi- 
cation is  totally  silent  on  the  subject ;  therefore,  a  person  reading  the  speci- 
fication, would  never  dream  that  the  other  floats  must  be  governed  by  rods 


418  LAW    OP    PATENTS. 

of  a  specification ;  but  the  question  which  should  be  propounded 

of  unequal  length  ;  and  least  of  all  could  he  ascertain  what  their  lengths 
should  be,  until  he  had  made  experiments.  Therefore,  it  is  contended  that 
the  specification  does  not  state,  as  it  should  have  stated,  the  proper  manner 
of  doing  it.  He  says,  if  they  are  made  of  equal  lengths,  though  the  govern- 
ing rod  would  be  vertical  at  the  time  of  entering,  and  three  would  be  so  when 
they  arrived  at  the  same  spot,  by  reason  of  the  operation  Mr.  Park  suggests, 
yet  the  fourth  would  not  come  vertical  at  the  proper  point,  nor  would  the 
fifth,  sixth,  or  seventh.  Then  they  would  not  accomplish  that  advantage 
which  professes  to  be  acquired.  The  patentee  ought  to  state  in  his  specifi- 
cation the  precise  way  of  doing  it.  If  it  cannot  completely  be  done  by  fol- 
lowing the  specification,  then  a  person  will  not  infringe  the  patent  by  doing 
it.  If  this  were  an  infringement,  it  would  be  an  infringement  to  do  that 
perfectly,  which,  according  to  the  specification,  requires  something  else  to  be 
done  to  make  it  perfect.  If  that  be  correct,  you  would  prevent  a  man  from 
having  a  perfect  engine.  He  says,  practically  speaking,  the  difl^erence  in  the 
length  of  the  rods  would  not  be  very  material,  the  diflference  being  small. 
But  the  whole  question  is  small,  therefore  it  ought  to  have  been  specified  ; 
and  if  it  could  not  be  ascertained  fully,  it  should  have  been  so  stated.  Now, 
this  is  the  part  to  which  I  was  referring,  when,  in  the  preliminary  observa- 
tions I  addressed  to  you,  I  cited  the  case  before  Lord  Mansfield,  on  the  sub- 
ject of  the  introduction  of  tallow,  to  enable  the  machine  to  work  more 
smoothly.  There,  it  was  held,  that  the  use  of  the  tallow  ought  to  have  been 
stated  in  the  specification.  This  small  adjustment  of  these  difierent  lengths 
may  have  been  made  for  the  purpose  of  making  the  machine  work  more 
smoothly  ;  if  so,  it  is  just  as  much  necessary  that  it  should  be  so  stated  in 
the  specification,  as  it  was  that  the  tallow  should  be  mentioned.  The  true 
criterion  is  this, — has  the  specification  substantially  complied  with  that 
which  the  public  has  a  right  to  require  ?  Has  the  patentee  communicated 
to  the  public  the  manner  of  carrying  his  invention  into  effect?  If  he  has, 
and  if  he  has  given  to  the  public  all  the  knowledge  he  had  himself,  he  has 
done  that  which  he  ought  to  have  done,  and  which  the  public  has  a  right  to 
require  from  him. 

"I  will  now  read  the  defendant's  evidence,  and  you  will  see,  whether, 
upon  the  whole,  there  is  evidence  before  you,  on  which  you  think  you  can 
come  to  any  reasonable  conclusion. 

"Now,  first  of  all,  Mr.  Donkin,  a  man  of  considerable  experience,  is 
called  ;  but  before  1  go  to  his  evidence,  I  will  remark,  that  I  have  always 
found  that  there  is  a  great  deal  of  contradiction  in  questions  of  this  descrip- 
tion ;  but  that  is  not  to  be  attributed,  in  the  least  degree,  to  corruption,  or 
to  any  intention  to  misrepresent  or  mislead  —  people's  opinions  vary.  They 
come  to  state  to  you  not  matters  of  fact,  but  matters  of  opinion,  and  they  tell 


EVIDENCE.  419 

to  them,  in  cases  where  there  is  a  recognized  class  of  practical 

yoa,  conscientiously,  what  their  opinion  really  is.  You  may  have  a  great 
difference  of  opinion,  annong  scientific  men,  on  a  question  relating  to  science ; 
but  though,  by  their  evidence,  they  contradict  one  another,  they  are  not 
influenced  by  a  corrupt  desire  to  misrepresent. 

"Now,  Mr.  Donkin  says,  'On  first  reading  the  specification,  I  thought 
there  was  a  defect  in  its  not  explaining  the  mode  of  obtaining  the  required 
angle.  In  my  judgment,  a  workman  of  ordinary  skill  would  not  be  able  to 
find  out  any  mode  of  obtaining  the  required  angle.'  He  says,  a  geometri- 
cian might  discover  the  mode  of  adjusting  the  three  angles,  the  angle  of 
immersion,  the  vertical  angle,  and  the  angle  of  emersion  ;  but,  in  order  to 
discover  the  mode  by  which  all  the  paddles  may  enter  at  the  same  angle, 
another  discovery  must  be  made.  He  says,  it  requires  to  be  ascertained,  by 
experiment  or  diagram,  whether  the  adjustment  is  to  be  made  by  altering 
the  bent  stem,  or  by  varying  the  length  of  the  rods,  and  you  have  nothing  but 
the  drawing  to  guide  you  in  that  respect.  He  says,  he  must  first  ascertain 
whether  he  is  to  produce  the  effect  by  altering  the  centre,  or  by  altering  the 
bent  stem,  or  varying  the  lengths  of  the  movable  rods.  "What  are  those  but 
experiments  to  ascertain  how  the  thing  should  be  done,  all  of  which  he  ought 
to  have  been  saved,  by  its  being  stated  in  the  specification  how  to  do  it. 
However,  that  is  his  evidence  ;  he  says,  the  angle  must  depend  on  the 
dimensions  of  the  several  parts  of  the  wheel.  Then  he  goes  on  to  the 
other  parts  of  the  case,  and,  on  his  cross-examination,  he  says,  'I  think  a 
competent  workman  would  be  able  to  do  it  if  he  made  the  previous  discovery  ; 
but  he  would  not  do  it  unless  a  careful  investigation  was  gone  into.'  He 
says,  '  few  ordinary  workmen  would  be  able  to  get  the  desired  angle  ;  I 
think  my  foreman  would  —  I  think  a  person  moderately  acquainted  with 
geometry  might  do  it,  but  he  must  find  it  out — he  could  sit  down  and 
determine  it.  If  he  possessed  proper  information,  he  ought  to  be  able  to  do 
it.  An  engineer  properly  skilled  in  geometry,  ought  to  be  able  to  find  out 
how  the  angle  was  to  be  determined.  If  he  sat  down  and  referred  to  his 
general  knowledge,  he  would  find  it  out.'  Now,  the  criterion  is  not,  whether 
he  could  find  it  out  or  not,  but,  whether  he  could  do  it  by  means  of  the 
information  contained  in  this  specification  and  drawing,  calling  in  aid  his 
general  knowledge,  and  those  mechanical  means  with  which  he  may  rea- 
sonably be  expected  to  be  familiar;  but  if  he  is  to  sit  down  and  consider 
how  it  is  to  be  done,  that  is  not  sufficient.  You  will  judge,  whether,  or  not, 
the  evidence  of  this  witness  satisfies  you  on  these  points,  and  whether  it 
makes  out  the  proposition  for  which  the  defendants  contend. 

"Then,  Mr.  Brunton  says,  'I  think  a  workman  of  competent  skill  could 
not  construct  a  machine,  so  as  to  have  the  floats  enter  at  any  particular 
angle,  and  leave  at  a  particular  angle.'     He  says,  if  the  required  angle  was 


420  LAW    OF      PATENTS. 

workmen,  who  would  be  called  upon  to  apply  the  directions  of 

different  from  the  drawing,  it  would  be  an  exceedingly  difficult  thing,  and 
he  is  not  prepared  to  say  how  he  could  doit.  Then,  Mr.  Hawkins  says, 
'  I  do  not  think  a  workman  of  ordinary  skill  could,  from  the  plan  and  specifi- 
cation, make  a  wheel  that  should  enter  and  quit  the  water  at  a  different  angle 
from  that  given  in  the  drawing,  unless  he  possessed  considerable  ingenuity 
for  inventing  the  method  of  doing  it.' 

"  Then,  Mr.  Peter  Barlow  says,  '  There  are  not,  I  think,  sufficient  data  to 
adjust  the  angle.'  He  says,  if  the  length  of  the  stems  was  given,  the  diffi- 
culty would  be  very  great,  but  it  would  have  been  a  guide,  and  it  ought  to 
have  been  explained.  That  appears  to  me  to  be  a  very  good  common  sense 
observation.  Then,  Mr.  John  Donkin  says,  'I  think  an  ordinary  workman 
would  find  considerable  difficulty  in  altering  a  paddle-wheel  to  suit  a  partic- 
ular angle,  and  I  doubt  whether  he  could  do  it.'  On  his  cross-examination, 
he  says,  '  it  requires  more  than  a  common  knowledge  of  geometry  ;  I  think 
a  man  moderately  acquainted  with  geometry  might  do  it,  but  he  would  have 
to  make  experiments,  and  his  first  experiments  would  fail.  A  skilful  engi- 
neer would  have  less  difficulty  in  it,  but  he  ought  to  be  able  to  find  it  out.' 
Then,  Mr.  Bramah  says,  'I  think  I  could  discover  how  to  do  it.'  He  has 
been  an  engineer  many  years,  and  he  says,  '  I  think  I  could  discover  it,  but 
I  do  not  know  at  present  how  to  do  it.  Yesterday,  I  attended  to  the  evi- 
dence, and  this  morning  I  tried  to  find  out  how  it  was  to  be  done,  but  I  could 
not.'  Supposing  Mr.  Bramah  had  to  make  a  machine  of  this  kind,  is  he  to 
sit  down  and  invent  a  mode  of  doing  it,  or  ought  he  not  to  have  such  inform- 
ation afforded  as  would  enable  him  to  do  it  at  once  by  means  of  the  specifica- 
tion? Then,  Mr.  Francis  Bramah  says,  '  I  have  examined  the  specification  : 
I  could  not  make  a  machine  from  the  specification,  the  floats  of  which  should 
enter  and  leave  the  water  at  any  required  angle.  Till  I  came  into  court, 
yesterda)%  I  presumed  that  the  angle  given  in  the  drawing  was  the  best 
angle,  tliat  is,  that  the  specification  had  not  only  stated  how  to  do  it,  but  had 
described  the  best  angle.'  If  so,  it  would  be  a  specification  only  for  that 
particular  angle.  He  says,  'I  can  go  as  far  as  I  was  told,  yesterday,  but 
no  farther.' 

"  Now,  gentlemen,  I  have  gone  through  the  evidence  on  both  sides,  on 
this  point,  and  the  question,  upon  this  part  of  the  case,  revolves  itself  into 
this  :  Do  the  witnesses,  on  the  plaintiff's  side,  satisfy  you  that  the  patentee 
has,  in  his  specification,  given  to  the  public  the  means  of  making  a  machine 
which  shall  enter  and  leave  the  water  at  any  angle  that  may  be  ordered  : 
that  is,  if  a  man  ordered  a  machine  at  an  angle  likely  to  be  required  for 
entering  and  going  out,  and  to  be  vertical  at  the  bottom,  could  an  ordinary 
workman,  with  competent  skill,  execute  that  order  by  following  the  direc- 
tions given  in  this  specification  ?    If  you  think  he  could,  then  the  specifica- 


EVIDENCE.  421 

the  specification,  is,  whether  a  person  of  that  class,  of  ordinary 
skill,  could  practise  the  invention  from  these  directions.  There 
does  not  seem  to  be  any  authority,  which  goes  the  length  of  say- 
ing that  a  specification  in  cases  of  this  kind,  would  be  good,  if 
every  competent  artisan  who  might  be  called  were  to  testify 
that  he  could  not  apply  the  directions  successfully,  provided  a 
scientific  witness,  of  the  other  class,  were  to  testify  that  he  could 
teach    or   demonstrate    to   an   artisan    how    to   apply  them  ;  ^ 


tion  would  be  suIBcient.  If,  on  the  other  hand,  you  think  he  would  not  be 
able  to  execute  the  order,  unless  he  sat  down  and  taxed  his  invention  to  find 
out  a  method  of  doing  that  which  has  not  been  sufficiently  described  in  the 
specification,  then  the  specification  would  be  bad.  If  you  think  the  specifi- 
cation good,  then  you  ought  to  find  fur  the  plaintiffs  upon  that  issue  ;  if  you 
think  the  specification  bad,  then  you  ought  to  find  for  the  defendants." 

'  In  Allen  v.  Blunt,  3  Story's  R.  747,  748,  Mr.  Justice  Story  made  use  of 
the  following  language  :  "  As  to  the  relative  weight  of  the  evidence  of  per- 
sons practically  engaged  in  the  trade,  employment,  or  business  of  the  partic- 
ular branch  of  mechanics  to  which  the  patent  right  applies,  and  the  evidence 
of  persons  who,  although  not  practical  artisans,  are  thoroughly  conversant 
with  the  subject  of  mechanics  as  a  science.  It  appears  to  me,  that  the 
Patent  Acts  look  to  both  classes  of  persons,  not  only  as  competent,  but  as 
peculiarly  appropriate  witnesses,  but  for  different  purposes.  Two  important 
points  are  necessary  to  support  the  claim  to  an  invention  :  First,  that  it 
should  be  substantially  new,  as,  for  example,  if  it  be  a  piece  of  mechanism, 
that  it  should  be  substantially  new  in  its  structure  or  mode  of  operation. 
Secondly,  that  the  specification  should  express  the  mode  of  constructing, 
compounding,  and  using  the  same  in  such  full,  clear,  and  exact  terms,  '  as  to 
enable  any  person  skilled  in  the  art  or  science,  to  which  it  appertains,  or  with 
which  it  is  most  nearly  connected,  to  make,  construct,  compound,  and  use 
the  same.'  Now,  for  the  latter  purpose,  a  mere  artisan  skilled  in  the  art 
with  which  it  is  connected,  may,  in  many  cases,  be  an  important  and  satis- 
factory witness.  If,  as  a  mere  artisan,  he  can,  from  the  description  in  the 
specification,  so  make,  construct,  compound,  and  use  the  same,  it  would  be 
very  cogent  evidence  of  the  sufficiency  of  the  specification.  Still,  it  is  obvi- 
ous, that,  although  a  mere  artisan,  who  had  no  scientific  knowledge  on  the 
subject,  and  who  was  unacquainted  with  the  various  mechanical  or  chemical 
equivalents  employed  in  such  cases,  might  not  be  able  to  make  and  compound 
the  thing  patented,  from  the  specification  ;  yet,  a  person  who  was  skilled  in 
the  very  science  on  which  it  depended,  and  with  the  mechanical  and  chemical 
powers  and  equivalents,  might  be  able  to  teach  and  demonstrate  to  an  artisan, 
how  it  was  to  be  made  or  constructed,  or  compounded  or  used.  A  fortiori 
36 


422  ^^^    OF      PATENTS. 

although  proof  may  be  offered  of  the  opinions  of  scientific 
witnesses,  that  a  particular  means  which  might  be  used  to  carry 
out  the  general  directions  of  a  specification,  would  succeed, 
without  showing  that  that  means  had  actually  been  tried  and 
had  succeeded.^ 

<§)  368.  Whether  there  is  a  class  of  inventions,  addressed  so 
entirely  to  scientific  witnesses,  as  to  render  their  knowledge  and 
skill  requisite,  in  the  practical  application  of  the  directions,  so 


he  would  be  enabled  so  to  do,  if  he  combined  practical  skill  with  a  thorough 
knowledge  of  the  scientific  principles  on  which  it  depended."    It  is  not  quite 
clear,  upon  this  passage,  whether  the  learned  judge  did  or  did  not  mean  to 
intimate,  that  a  specification  would  be  good,  if  a  scientific  witness  could  teach 
an  artisan  how  to  make,  compound,  or  use  the  thing  patented,  although  the 
artisan  could  not  practise  the  invention  without  such  aid.     The  sense  in  which 
he  seems  to  oppose  the  word   '  artisan  '  to  that  class  of  persons  who  are  not 
practical  artisans,  but  who  are  '  thoroughly  conversant  with  the  subject  of 
mechanics  as  a  science,'  or  are  '  skilled  in  the  very  science  on  which  the 
invention  depends,'  would  seem  to  imply  that  an  obscurity  or  other  defect, 
in  a  specification,  which  would   embarass  an  artisan,  may  be  cured  by  a 
scientific  person,  whose  superior  knowledge  of  the  principles  of  the  science, 
might  be  used  to  teach  the  workman,  from  the  specification  ;  if  so,  this  is  not 
the  standard  which  the  same  learned  judge  adopted  on  other  occasions.     In 
Lowell  V.  Lewis,  1  Mas.  190,  he  instructed  the  jury,  that  the  question  was, 
whether  the  specification  was  so  clear  and  full, -that  a  pump-maker  of  ordi- 
nary skill,  cou]d,  from  the  terms  of  the  specification,  construct  a  pump  on 
the  plan  described.     Perhaps,   however,  in  the  more  recent  case,  he  in- 
tended only  to  draw  a  distinction  between  mere  mechanics,  or  laborers,  in 
a  particular  art,  manufacture,   or  trade,  and   persons  conversant  with  the 
science  on  which  it  depends ;  and  to  say  that  the  latter  are  competent,  and 
often  the  most  satisfactory  witnesses,  which  is  certainly  obvious.      It   is 
scarcely  to  be  presumed,  that  he  meant  to  say,  that  where  the  description  in 
a  patent  is  of  a  thing,   which  a  particular  class  of  mechanics  would   be 
employed  to  make,  the  specification  would  be  sufficient,   although  it  could 
not  be  carried  out  by  a  workman  of  that  class,  having  ordinary  skill,  pro- 
vided it  could  be  understood  by  a  '  person  thoroughly  conversant  with  the 
subject  of  mechanics  as  a  science.'     This,  as   a  general  proposition,  would 
confine  the  practice  of  many  inventions,  after  the  patent  had  expired,  to  the 
latter  class  of  persons,  which  the  patent  law  does  not  intend. 
»  Neilson  v.  Harford,  Webs.  Pat.  Cas.  295,  315,  316. 


EVIDENCE.  423 

that  there  cannot  be  said  to  be  any  recognized  class  of  artisans, 
to  whose  capacity  the  directions  can  be  referred,  is  another 
question.     This  must  depend  on  the  nature  of  the  invention. 

<§)  369.  Before  it  can  be  determined,  in  any  case,  what  class 
of  persons  are  to  be  taken  as  those,  whose  ability  to  apply  the 
directions  furnishes  the  standard  of  the  sufficiency  of  the  spe- 
cification, it  must  first  be  ascertained  to  what  class  of  persons 
the  specification  is  presumed  to  be  addressed,  as  being  those 
who  are  to  carry  out  the  directions.  If  the  inquiry  arose  after 
the  patent  had  expired,  this  class  of  persons  would,  in  most 
cases,  be  readily  ascertained,  by  observing  what  persons  applied 
themselves  to  the  practice  of  the  invention.  But  it  actually 
arises,  before  the  patent  has  expired,  and  before  its  dedication 
to  the  public  enables  us  to  see  what  persons  will  undertake  to 
practise  the  invention.  That  state  of  things  must,  therefore,  be 
anticipated,  so  far  as  to  ascertain  what  persons  will  undertake 
practically  to  carry  out  the  directions  of  the  patent,  for  the  pur- 
pose for  which  the  invention  is  designed.  The  standard,  there- 
fore, will  vary  greatly,  according  to  the  nature  of  the  invention. 
In  some  cases,  the  persons  who  will  undertake  to  practise  it  will 
be  very  numerous,  in  others,  very  limited,  in  point  of  numbers. 
In  some  cases,  the  qualifications  will  be  very  moderate,  in 
others,  a  very  high  state  of  accomplishment,  skill,  and  know- 
ledge, will  be  requisite.  The  nature  and  objects  of  the  inven- 
tion must  be  resorted  to,  to  see  to  what  persons  the  specification 
is  to  be  presumed  to  be  addressed.  If  it  be  a  machine  des- 
tined to  a  particular  use,  the  workmen  whose  vocation  it  is  to 
make  similar  machines,  for  similar  purposes,  will  be  the  persons 
who  would  be  called  upon  to  make  the  machine  after  the  patent 
has  expired.  If  it  be  a  composition  of  matter,  involving  the 
knowledge  of  practical  chemists,  such  persons  will  attempt  to 
practise  the  invention,  when  they  are  at  liberty  to  do  so.  If  it 
be  a  manufacture  of  an  improved  character,  the  persons  whose 
business  it  has  been  to  make  the  old  article,  will  be  the  per- 
sons who  will  make  the  new  one.     In  all  these  and  similar 


424  LAW     OF     PATENTS. 

cases,  where  there  is  a  class  of  workmen,  who  are  habituated 
to  the  practical  exercise  of  the  art  or  science  under  which  the 
patented  invention  falls,  the  specification  is  to  be  presumed  to 
be  addressed  to  them  ;  and,  although  scientific  witnesses  may 
be  examined,  as  to  the  clearness  and  fulness  of  the  specification, 
its  sufficiency  must  be  referred  to  the  ability  of  competent  prac- 
tical workmen,  of  ordinary  skill,  to  understand  and  apply  it. 
This  limitation  of  the  evidence  follows,  necessarily,  from  the 
principle  that  the  specification  cannot  be  suppoited  by  the  fresh 
invention  and  correction  of  a  scientific  person.  The  ordinary 
knowledge  and  skill  of  practical  workmen  being  the  standard, 
where  the  specification  is  for  the  benefit  of  a  particular  trade, 
the  evidence  cannot  be  carried  so  far  as  to  include  the  degree 
of  skill  and  knowledge  possessed  by  a  scientific  person,  who 
could,  on  a  mere  hint,  invent  the  thing  proposed  to  be  accom- 
plished ;  although  such  a  witness  may  be  asked,  whether  a  com- 
petent workman  could  attain  the  object  of  the  patent,  by  follow- 
ing out  the  directions.^ 

<§)  370.  But  if  the  invention  be  of  a  character  entirely  novel, 
embodying  an  eflfect  never  before  produced,  and  which  it  is  not 
within  the  province  of  any  particular  class  of  workmen  to  pro- 
duce, but  which  it  belongs  rather  to  the  province  of  men  pos- 
sessed of  some  science  to  apply,  by  directing  the  labors  of  com- 
mon artisans,  upon  principles  which  such  artisans  do  not  com- 
monly understand  or  undertake  to  use,  then  the  specification  may 
be  presumed  to  be  addressed  to  men  capable  of  applying  those 
principles,  and  not  to  mere  artisans,  who  have  previously  been 
employed  in  the  construction  of  things  of  the  same  class  which  it 
is  the  object  of  the  invention  to  supersede.  Thus,  in  the  case  of  an 
invention,  which  consisted  in  an  improvement  on  paddle-wheels 
for  propelling  vessels,  by  a  mode  of  constructing  them,  so  that 
the  floats  might  enter  and  quit  the  water  at  any  required  angle, 


'  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  174;    Neilson  v.  Harford,  Ibid. 
371  ;  The  Househill  Co.  v.  Neilson,  Ibid.  692. 


EVIDENCE. 


425 


the  specification  would  be  addressed  to  engineers  capable  of 
determining  what  angle  was  required,  and  it  ought  to  furnish 
the  rules  by  which  such  persons  could  ascertain  the  angle,  and 
the  mechanical  m^ans  by  which  it  could  be  applied  in  practice.^ 
The  understanding  of  such  a  specification  would  be  somewhat 
above  the  range  of  acquirements  belonging  to  mechanics 
employed  in  the  manual  labor  of  constructing  the  machinery, 
that  is  to  say,  the  specification  would  be  addressed  to  competent 
engineers,  of  ordinary  skill  in  that  profession.- 

<§>  371.  But  it  should  be  remembered,  that  whenever,  in  a 
case  of  this  kind,  as  in  all  other  cases,  the  persons  to  whom  the 
specification  is  to  be  presumed  to  be  addressed,  have  been 
ascertained,  a  rule  becomes  applicable,  which  defines  the  nature 
and  scope  of  the  evidence  that  may  be  oflTered,  to  explain  the 
specification.  This  rule  is,  that  the  patentee  must  not,  in 
framing  his  specification,  call  upon  the  persons  to  whom  it  is 
addressed  to  exercise  more  than  the  actual  existing  knowledge 
common  to  their  trade  or  profession.  He  has  a  right  to  exhaust 
this  knowledge ;  but  if,  in  order  to  apply  his  directions,  the 
members  of  the  trade  or  profession  are  required  to  tax  their 
ingenuity  or  invention,  so  that,  beyond  the  exercise  of  ordinary 
and  competent  skill,  they  would  have  to  solve  a  problem,  or 
supply  something,  in  the  process,  by  the  exercise  of  tlie  invent- 
ive faculty  ;  the  specification  would  be  bad.^ 

<§>  372.  II.  As  to  the  Infringement.  Upon  the  question  of 
infringement,  the  point  to  be  determined  is,  whether  the  thing 
made  or  used  by  the  defendant  is,  in  the  sense  of  the  patent 
law,  identical  with  the  invention  of  the  patentee.  This  is  the 
same  question  as  that  which  arises  on  the  issues  of  novelty,  when 
it   is   necessary    to   determine   whether   the    invention  of  the 


'  Morgan  v.  Seaward,  Webs.  Pat.  Cas.  170;  Ante,  p.  409  et  seq. 
*  Ibid. 
'  Ibid. 

36* 


426  LAW     OF     PATENTS. 

patentee  is  the  same  as  some  former  thing,  or  different,  and 
therefore  entitled  to  be  regarded  as  a  novelty.  We  may,  there- 
fore, here  consider  the  principles  of  evidence  applicable  to  the 
inquiry,  whether  two  things  are  identical  in  the  sense  of  the 
patent  law. 

«§.  373.  It  is  obvious  that  there  may  be  two  kinds  of  evidence 
applicable  to  this  issue,  both  of  which  may  be  drawn  from 
experts.  Whether  one  thing  is  like  another,  is  a  matter  of 
judgment,  to  be  determined  on  the  evidence  of  our  own  senses, 
or  the  senses  of  others.  If  we  rely  on  the  senses  of  others,  the 
sole  testimony  which  they  can  bear,  is,  either  as  to  the  matters 
of  fact  which  constitute  the  precise  differences  or  resemblances 
between  the  two  things,  or  as  to  matter  of  opinion,  by  which 
they  infer  that  these  differences  or  resemblances  do,  or  do  not 
affect  the  question  of  the  substantial  identity  of  the  two  things. 
Both  of  these  kinds  of  evidence,  however,  run  so  nearly  into 
each  other,  and  the  boundaries  between  them  are  often  so 
shadowy,  that  it  is  sometimes  difficult  to  draw  the  line  between 
fact  and  opinion.  The  actual  differences  or  resemblances 
between  two  things  are  prima  facie  matters  of  fact,  to  t)e 
observed  by  the  senses ;  but,  with  the  act  of  observing  these 
differences  or  resemblances,  we  blend  the  process  of  reasoning, 
by  which  we  determine,  for  our  own  satisfaction,  what  is  a  real, 
and  what  only  an  apparent  difference  or  resemblance;  what 
constitutes  a  difference  or  resemblance,  in  point  of  principle  ; 
and  the  result  of  this  process,  expressed  in  the  conclusion,  that 
the  two  things  are,  or  are  not  identical,  is  matter  of  opinion. 
Between  these  two  branches  of  evidence,  it  is  exceedingly  diffi- 
cult to  draw  the  line,  so  as  to  define  the  true  office  of  an  expert, 
and  to  admit  all  proper  evidence  of  facts  and  opinions,  without 
leaving  to  the  witness  the  whole  determination  of  the  issue.^ 


'  In  Dixon  v.  Moyer,  4  Wash.  68,  71,  Mr.  Justice  Washington  said  :  "  In 
actions  of  this  kind,  persons  acquainted  with  the  particular  art  to  which  the 
controversy  relates  are  usually  examined  for  the  purpose  of  pointing  out  and 


EVIDENCE.  427 

<§>  374.  At  the  same  time,  it  is  certain  that  a  boundary  exists 
somewhere.  The  question  whether  two  things  are  identical,  in 
the  sense  of  the  patent  law,  is  a  mixed  question  of  law  and 
fact ;  and  when  it  is  submitted  to  a  jury,  it  is  for  the  court  to 
instruct  them,  after  the  actual  differences  or  resemblances  are 
ascertained,  what  constitutes,  in  point  of  law,  a  difference  or 
identity.^  There  is,  therefore,  a  most  important  function  to  be 
discharged,  if  one  may  so  say,  by  the  law  itself;  for  it  has  to 
determine,  upon  all  the  facts  open  to  the  observation  of  the 
senses,  whether  guided  by  the  superior  facility  for  observation 
enjoyed  by  experts,  or  not  so  assisted,  whether,  in  the  sense  of 
the  law,  there  is  an  identity  or  a  difference.  This  function  is 
always  in  danger  of  being  encroached  upon,  by  a  loose  mode 
of  receiving  the  testimony  of  experts,  by  whom  the  whole  ques- 
tion is  often  in  reality  left  to  be  decided. 

<§)  375.  The  testimony  of  persons  skilled  in  the  particular 
subject  is  undoubtedly  admissible,  for  two  purposes  ;  first,  to 
point  out  and  explain  the  points  of  actual  resemblance  or  differ- 
ence ;  secondly,  to  state,  as  matter  of  opinion,  whether  these 
i^semblances  or  differences  are  material ;  whether  they  are 
important  or  unimportant ;  whether  the  changes  introduced  are 
merely  the  substitution  of  one  mechanical  or  chemical  equiva- 
lent for  another,  or  whether  they  constitute  a  real  change  of 
structure  or  composition,  affecting  the  substance  of  the  inven- 
tion. But  when  these  facts  and  opinions  have  been  ascertained, 
the  judgment  of  the  jury  is  to  be  exercised,  upon  the  whole  of 
the  evidence,  under  the  instructions  of  the  court  as  to  what 


explaining  to  the  jury  the  points  of  resennblance,  or  of  difference,  between 
the  thing  patented,  and  that  which  is  the  alleged  cause  of  the  controversy  ; 
and  the  opinions  of  such  witnesses,  in  relation  to  the  materiality  of  apparent 
differences,  are  always  entitled  to  great  respect.  But,  after  all,  the  jury 
must  judge  for  themselves,  as  well  upon  the  information  so  given  to  them, 
as  upon  their  own  view,  where  the  articles,  or  models  of  them,  are  brought 
into  court." 

'  Barrett  v.  Hall,  1  Mas.  447,  470,  471,  472. 


428  LAW    OF    PATENTS. 

constitutes  such  a  change  as  will  in  point  of  law  amount  to  a 
fresh  invention  and  therefore  will  not  be  an  infringement.^ 

<5.  376.  The  duty  of  giving  this  instruction  should  not  be 
surrendered  by  the  court.  A  scientific  witness  may  be  asked, 
for  instance,  whether  in  his  opinion,  a  particular  machine  is 
substantially  new  in  its  structure,  or  mode  of  operation,  or 
whether  it  is  substantially  the  same  thing  as  another,  with  only 
apparent  differences  of  form  and  structure.  But  when  the 
differences  or  resemblances  have  been  pointed  out,  and  when 
the  view  that  science  takes  of  their  relative  importance  has 
been  ascertained ;  when  the  fact  appears  of  whether  a  particu- 
lar change  is  or  is  not  regarded  by  mechanicians  as  the  substi- 
tution of  one  mechanical  equivalent  for  another,  the  court  must 
instruct  the  jury,  whether  the  particular  change  amounts,  in 
point  of  law,  to  a  change  of  what  is  commonly  called  the  prin- 
ciple of  the  machine.  This  is  a  question  wholly  aside  from 
the  function  of  a  witness.  The  most  skilful  and  scientific 
mechanician  in  the  world  can  only  say  what,  in  his  opinion, 
are  the  differences  or  resemblances  between  one  machine  and 
another,  and  how  far  they  are  regarded  by  mechanicians  as 
material,  or  substantial.  But  the  question  of  what  constitutes 
a  fresh  invention,  or  what,  upon  a  given  state  of  facts,  amounts 
to  a  change  so  great  as  to  support  an  independent  patent  for  a 
new  thing,  is  a  question  of  law ;  and  this  question  is  involved 
in  every  issue  as  to  the  identity  of  two  things,  whether  it  relates 
to  the  question  of  infringement  or  of  prior  invention.^ 


'  In  Allen  v.  Blunt,  3  Story's  R.  742,  748,  749.  Mr.  Justice  Story,  dis- 
cussing the  relative  value  of  scientific  witnesses  and  mere  artisans,  said 
"  The  very  highest  witnesses  to  ascertain  and  verify  the  novelty  of  an  in- 
vention, and  the  novelty  or  diversity  of  mechanical  apparatus  and  contri- 
vances, and  equivalents,  are  beyond  all  question,  all  other  circumstances 
being  equal,  scientific  mechanics  ;  they  are  far  the  most  important  and  use- 
ful to  guide  the  judgment  and  to  enable  the  jury  to  draw  a  safe  conclusion, 
whether  the  modes  of  operation  are  new  or  old,  identical  or  diverse.  ^^ 

*  See  the  instructions  of  the  court  in  Walton  v.  Potter,  Webs.  Pat.  Cas. 


EVIDENCE.  429 

«§>  377.  The  evidence  for  the  defendant,  upon  the  question 
of  novelty,  will  of  course  consist  of  proof,  positive  in  its  nature, 
that  the  thing  patented  existed  before ;  and  if  any  credible 
evidence  of  this  is  adduced,  it  will  outweigh  all  the  negative 
evidence  that  can  be  offered  by  the  plaintiff.^  But  whenever 
the  defendant  relies  on  the  fact  of  a  previous  invention,  know- 
ledge, or  use  of  the  thing  patented,  he  must  give  notice  of 
the  names  and  places  of  residence  of  the  persons  who  he 
intends  to  prove  have  possessed  a  prior  knowledge  or  had  a 
prior  use  of  it.^ 

<§>  378.  Persons  who  have  used  the  machine  patented  are  not 
thereby  rendered  incompetent  as  witnesses,  on  account  of  inter 
est.^  It  has  been  held  that  a  witness  who  was  patentee  in  another 
patent,  and  had  sold  to  the  defendant  the  right  to  use  the 
machine,  the  use  of  which  was  complained  of  as  an  infringe- 
ment, was  a  competent  witness,  since  any  verdict  that  the 
plaintiff  might  recover  could  not  be  given  in  evidence  by  the 
plaintiff  in  an  action  against  the  witness.'*  A  patentee  who  has 
assigned  the  whole  of  his  interest  in  the  patent,  is  a  competent 
witness  for  the  assignee  in  support  of  it.^  A  licensee  is  a  com- 
petent witness  for  the  patent,  in  an  action  for  an  infringement, 
for  he  has  no  direct  pecuniary  interest  in  supporting  the  patent, 
but  it  may  be  for  his  advantage  that  it  should  not  be  sup- 
ported.^    Evidence,  on  the  part  of  the  plaintiff,  that  the  per- 


585,  586,  587,  589,  591  ;  Huddart  v.  Grimshaw,  Ibid.  85,  86,  91,  92,  95. 
See  also  ihe  examination  of  certain  experts  in  Russell  v.  Cowley,  Ibid.  462, 
before  Lord  Lyndhurst,  in  the  Exchequer,  cited  ante. 
'  Manton  v.  Manton,  Dav.  Pat.  Cas.  250. 

*  As  to  the  evidence  appropriate  to  the  different  defences  to  an  action, 
see  ante,  in  the  chapter  on  Actions  at  Law. 

'  Evans  V.  Eaton,  7  Wheat.  356;  Evans  v.  Hettich,  Ibid.  453  ;  2  Greenl. 
on  Evid.  ^  508. 

*  Tread  well  v.  Bladen,  4  Wash.  704. 
«  Bloxam  v.  Eisee,  1  C.  &  P.  563. 

*  Derosne  v.  Fairie,  Webs.  Pat.  Cas.  154. 


430  LAW     OF    PATENTS. 

sons  of  whose  prior  use  of  a  patented  machine  the  defendant 
had  given  evidence,  had  paid  the  plaintiff  for  hcenses,  ought 
not  to  be  absolutely  rejected,  though  entitled  to  very  little 
weight.^ 

»  Evana  v.  Eaton,  3  Wheat.  454. 


CHAPTER   V. 

QUESTIONS    OF    LAW    AND    QUESTIONS    OF    FACT. 

<§>  379.  The  several  provinces  of  the  court  and  the  jury,  in 
the  trial  of  patent  causes,  have  already  been  incidentally  alluded 
to;  but  it  may  be  proper  to  give  here  a  summary  of  the  princi- 
pal questions  which  constitute  matters  of  fact  and  matters 
of  law. 

<§.  380.  The  question  of  novelty  is  a  question  of  fact  for  the 
jury.  It  embraces  the  two  questions  of  whether  the  plain- 
tifl',  or  patentee,  was  the  inventor  of  the  thing  patented,  and 
whether  the  thing  patented  is  substantially  different  from  any 
thing  before  known.  These  are  questions  of  fact  for  the  jury 
upon  the  evidence.^  But  it  is  for  the  court  to  instruct  the  jury 
what  constitutes  novelty  in  the  sense  of  the  patent  law,  as  well 
as  what  amounts  to  a  sufficiency  of  invention  to  support  a  patent. 
So,  also,  the  question  of  prior  public  use  is  a  question  of  fact.^ 

*§>381.  The  question  whether  the  renewed  patent  is  for  the 
same  invention  as  the  original  patent,  is  also  a  question  of  fact 
for  the  jury  ;^  as  is  likewise  the  question  whether  the  invention 
had  been  abandoned  to  the  public.^ 


'  Whittemore  v.  Cutter,  1  Gallis.  478 ;  Lowell  v.  Lewis,  1  Mas.  ;  Car- 
ver V.  Braintree  Manuf.  Co.  2  Story's  R.  432,  441. 

*  Ante,  §53,  note  3. 

'  Carver  v.  Braintree  Manuf.  Company,  2  Story's  R.  432,  441. 

*  Ante,  ^  57,  note  2. 


432  LAW     OF     PATENTS. 

<§,  382.  The  question  of  utility  is  a  question  of  fact,  under 
some  circumstances,  and  under  other  circumstances  it  may  be 
for  the  court,  without  referring  it  to  the  jury,  to  pronounce  the 
patent  void.  We  have  seen  that  a  "  useful  invention,"  in  the 
sense  of  our  law,  is  one  not  injurious  or  mischievous  to  society, 
and  not  frivolous  or  insignificant,  but  capable  of  use  for  a  pur- 
pose from  which  some  advantage  can  be  derived  ;  and  that 
when  an  invention  is  useful  in  this  sense,  the  degree  or  extent 
of  its  usefulness  is  wholly  unimportant.  There  are,  therefore, 
two  modes,  in  which  the  utility  of  an  invention  may  be  im- 
peached ;  first,  when  it  appears,  on  the  face  of  the  letters-patent 
and  specification,  that  the  invention  is  injurious  to  the  morals  or 
health  of  society  ;  secondly,  when  it  appears,  on  the  evidence, 
that  the  thing  invented,  although  its  object  may  be  innocent  or 
useful,  is  not  capable  of  being  used  to  effect  the  object  pro- 
posed. 

'§.383.  The  question  whether  the  invention  is  useful,  in  the 
first  sense,  is  a  question  whether  the  patent  is  void,  on  the  face 
of  it,  as  being  against  public  policy  ;  or  in  other  words,  because 
the  subject-matter  disclosed  by  the  patent  is  not  a  patentable 
subject.  This  is  a  question  of  law  for  the  court.^  But  when 
it  does  not  appear  that  the  invention  has  any  noxious  or  mis- 
chievous tendency,  but  on  the  contrary  that  its  object  is  inno- 
cent or  salutary,  there  may  be  a  farther  question,  whether  the 
means  by  which  the  inventor  professes  to  accomplish  that  object 
will  in  practice  succeed  or  fail.  It  is  not  essential  to  the 
validity  of  a  patent,  that  the  success  of  the  means  made  use  of 
should  be  complete,  or  that  the  thing  invented  should  supersede 
any  thing  else  used  for  the  same  purpose  ;  because  the  law 
looks  only  to  the  fact  that  the  invention  is  capable  of  some 
use.  Thus,  if  a  machine  is  useful  for  some  of  the  cases  for 
which  it  is  intended,  although  cases  may  occur  in  which  it  does 

*  Langdon  v.  De  Groot,  Paine's  C  C.  R.  203  ;  Lowell  v.  Lewis,  1  Mason, 
182;  Phillips  on  Patents,  p.  432. 


QUESTIONS  OF  LAW  AND  QUESTIONS  OF  FACT.      433 

not  answer,  it  is  still  useful,  in  this  sense  of  the  patent  law ;  ^ 
but  if  ciny  thing  claimed  as  an  essential  part  of  the  invention  is 
useless  altogether,  the  patent  is  invalid,  because  there  is  a  total 
failure  in  point  of  usefulness.^  These  questions,  whether  the 
invention  is  capable  of  use  for  the  purpose  for  which  it  is 
claimed,  and  whether  any  thing  claimed  as  essential  is  entirely 
useless,  depend  upon  evidence,  and  are  questions  of  fact  for  the 
jury.3 

§  384.  In  like  manner,  the  question  whether  an  invention  is 
frivolous  or  insignificant,  is  a  question  of  law.  If  the  object 
proposed  to  be  accomplished  is  a  frivolous  or  insignificant  object, 
from  which  no  advantage  can  be  derived  to  the  public,  it  is  for 
the  court  to  pronounce  the  patent  void,  as  not  being  for  a 
patentable  subject.  But  if  the  object  proposed  is  not  clearly 
frivolous  and  unimportant,  but  the  means  by  which  it  is  pro- 
posed to  be  accomplished  do  not  succeed  in  producing  the 
result,  the  question  returns  to  the  usefulness  of  the  means,  and 
this  again  becomes  a  question  of  fact  for  the  jury. 

<§>  385.  The  construction  of  the  specification,  as  to  the  extent 
of  the  claim,  belongs  to  the  province  of  the  court.  The  court 
must  determine,  upon  the  whole  instrument,  what  the  claim 
actually  covers,  and  whether  the  patent  is  valid  in  point  of  law. 
The  jury  are,  therefore,  to  take  the  construction  of  the  patent, 
as  to  the  extent  of  the  claim,  from  the  court,  and  to  determine 
whether  any  thing  that  is  included  in  the  claim  is  not  new. 
But  if  the  specification  contains  terms  of  art,  which  require 
explanation,  by  means  of  evidence,  it  is  for  the  jury  to  find  the 
meaning  of  those  terms.^ 

'  Haworth  v.  Hardcastle,  Webs.  Pat.  Cas.  480. 

2  Lewis  V.  Marling,  Webs.  Pat.  Cas.  490,  495. 

'  Haworth  v.  Hardcasile,  ut  sup.  ;  Lewis  v.  Marling,  ut  sup.  ;  Hill  v. 
Thompson,  3  Meriv.  630,  632;  Lowell  v.  Lewis,  1  Mason,  182  ;  Bedford  v. 
Hunt,  Ibid.  302. 

*  Ante,  ^  123,  124. 
37 


434  I'AW    OF     PATENTS. 

>§>  386.  And  here  it  is  very  important  to  ascertain  whether 
there  are  any  principles,  which  are  to  guide  the  court  in  con- 
struing patents,  peculiar  to  these  instruments,  or  whether  they 
are  to  be  construed  in  all  respects  like  other  written  instruments, 
and  without  the  aid  of  extrinsic  evidence.  In  one  sense,  a 
patent  is  a  deed,  being  a  grant  of  the  government  under  seal ; 
the  letters-patent,  the  specification,  and  the  drawings  annexed, 
being  taken  together  as  one  instrument.  But  it  often  happens 
that  the  extent  of  the  claim  is  not  manifest  on  the  face  of  the 
specification  itself.  The  question  arises,  therefore,  how  is  the 
court  to  ascertain  the  precise  extent  of  the  claim,  as  matter  of 
law  ?  The  specification  is  a  written  instrument,  in  which  the 
patentee  has  undertaken  to  state  the  invention  which  he  pro- 
fesses to  have  made,  and  for  which  he  has  obtained  letters- 
patent.  In  determining  the  real  extent  of  the  claim  thus  made, 
it  is  obvious  that  the  actual  invention  of  the  party  is  a  neces- 
sary auxiliary  to  the  construction  of  the  language  which  he  has 
employed  in  describing  it.  The  thing  of  which  the  patentee 
was  the  real  inventor  is  what  he  was  entitled  to  claim,  and  the 
question,  in  all  cases  requiring  construction,  will  be,  whether 
he  has  claimed  more  or  less  than  tiiat  thing,  or  exactly  what 
that  thing  is.  If  he  has  claimed  more  than  his  actual  invention, 
that  is,  more  than  that  of  which  he  was  an  original  and  the 
first  inventor,  his  claim  is  inoperative,  under  our  law,  pro  tanio. 
If  he  has  claimed  less,  his  exclusive  right  is  restricted  to  what 
he  has  claimed.  If  he  has  claimed  the  just  extent  of  his  actual 
invention,  he  is  entitled  to  hold  it,  in  all  its  length  and  breadth. 

<§.  387.  There  are  two  sources  to  which  the  court  is  entitled  to 
resort  in  construing  a  claim.  In  the  first  place,  resort  may  be  had 
to  the  descriptive  parts  of  the  specification,  where  the  patentee 
has  undertaken  to  state  what  his  invention  is  ;  in  other  words, 
the  court  is  to  inquire  what  the  patentee  has  said  that  he  had 
invented.  If  his  statement  or  description  of  the  invention  is 
clear  and  explicit,  then  the  language  in  which  he  has  made  his 
claim,  which  is  generally  to  be  found  in  a  summary  statement  of 


QUESTIONS    OF    LAW    AND    QUESTIONS    OF    FACT.  435 

the  subject-matter  for  which  he  asks  a  patent,  may  and  should 
be  construed  so  as  to  include  the  actual  invention  previously  set 
forth,  if  it  can  be  so  construed  without  violation  of  principle  ;  ^ 
for  the  general  maxim,  under  which  the  construction  is  to  be 
pursued,  is,  according  to  the  spirit  of  the  modern  authorities, 
ut  res  magis  valeat  quam  pereat. 

<§)  388.  But  it  may  be  uncertain  upon  the  terms  of  the 
descriptive  parts  of  the  specification,  if  unaided  by  evidence, 
what  the  precise  extent  of  the  invention  was  :  and  this  may 
happen,  without  that  degree  and  kind  of  ambiguity  which  ren- 
ders a  patent  void  for  uncertainty,  or  because  the  directions 
could  not  be  carried  out  by  a  competent  workman.  For 
instance,  the  patentee  may  state  that  he  employs  something 
which  turns  out  not  to  be  new  ;  and  the  question  will  then  be, 
whether  he  has  so  described  that  thing  as  to  claim  it  as  part  of 
his  invention  ;  —  or  his  invention  may  be  so  stated,  as  to  render 
it  doubtful,  whether  he  has  invented  or  discovered  the  general 
application  of  a  principle  to  produce  a  particular  effect,  and  is, 
therefore,  entitled  to  claim  all  the  forms  in  which  the  same  prin- 
ciple can  be  applied  to  produce  the  same  effect,  or,  whether  he 
has  only  invented  or  discovered  a  form  of  giving  effect  to  a  prin- 
ciple the  application  of  which  was  known  before.  So,  too,  on 
the  general  description  of  a  machine,  or  a  manufacture,  which, 
as  a  whole,  may  be  new,  it  may  be  uncertain,  whether  the 


'  See  Russell  v.  Cowley,  Webs.  Pat.  Cas.  469,  470;  Davoll  v.  Brown,  1 
Woodbury  &  M.  53,  59.  Where  the  construction  depends,  as  it  generally 
does,  in  the  first  instance,  on  the  terms  of  the  specification,  the  preamble 
may  sometimes  be  resorted  to,  Winans  v.  Boston  &  Providence  Railroad, 
2  Story's  R.  412  ;  sometimes  the  body  of  the  specification,  Russell  v.  Cow- 
ley, tit  sup.  459,  463  ;  sometimes  the  summing  up,  Moody  v.  Fiske,  2  Mason, 
112,  118.  Generally,  the  whole  is  examined  together,  unless  the  summary 
seems  explicitly  to  exclude  the  rest  of  the  specification  and  to  require  a  con- 
struction by  itself  alone.  MacFarlane  v.  Price,  Webs.  Pat.  Cas.  74;  1 
Starkie,  199  ;  The  King  v.  Culler,  Webs.  76,  note;  1  Starkie,  354;  Ames 
V.  Howard,  1  Sumner,  482,  485.     See  Davoll  v.  Brown,  ut  sup. 


436  LAW    OF    PATENTS. 

party  invented  the  various  parts  of  which  that  whole  is  conn- 
posed,  or  only  invented  the  conribined  whole,  as  he  has  produced 
it;  and,  if  the  latter,  whether  he  invented  the  whole,  as  it  may 
embrace  all  the  forms  and  dimensions  in  which  that  whole  can 
be  produced,  or,  whether  his  claim  is  to  be  confined  to  certain 
forms  and  dimensions,  there  being  other  wholes,  of  the  same 
general  character,  of  other  forms  and  dimensions,  which  it  does 
not  include. 

<§.  389.  In  such  cases,  the  character  and  scope  of  the  inven- 
tion can  only  be  ascertained,  by  attending  to  what  the  evidence 
shows  is  new  or  old  ;  to  the  state  of  the  art ;  to  the  fact  of 
whether  the  principle,  which  the  patentee  has  employed,  had 
been  discovered  and  applied  before,  and,  therefore,  that  he 
could  have  invented  only  a  new  form  of  the  application,  or, 
whether  he  has  invented  the  application  of  the  principle  itself, 
and,  consequently,  is  entitled,  if  he  has  not  restricted  himself,  to 
claim  the  same  application  of  the  same  principle,  under  other 
forms  or  dimensions,  or  by  other  means,  than  those  which  he 
has  specifically  described.  The  question,  whether  he  has  limited 
himself  to  particular  forms,  dimensions,  or  methods,  necessarily 
involves  an  inquiry  into  the  substance  and  essence  of  his  inven- 
tion. In  other  words,  before  it  can  be  ascertained,  in  doubtful 
cases,  what  he  has  claimed,  some  attention  must  be  paid  to  his 
actual  invention,  as  ascertained  on  the  evidence. 

<§.  390.  To  what  extent,  then,  is  the  court  entitled  to  receive 
evidence  of  the  actual  invention,  and  how  is  that  evidence  to  be 
applied  to  the  construction  of  the  claim  ?  In  the  progress  of  a 
nisi  prius  trial,  the  state  of  the  art,  the  surrounding  circum- 
stances in  which  the  inventor  was  placed,  the  previous  existence 
of  some  things  mentioned  or  referred  to  in  the  patent,  will  all 
be  likely  to  be  developed  on  the  evidence ;  and  these  facts  may 
materially  affect  the  construction  to  be  given  to  the  claim.  It 
has  been  said,  and  with  great  propriety,  that,  in  the  exercise  of 
the  duty  of  determining  what  the  claim  is,  in  point  of  law,  the 


QUESTIONS  OF  LAW  AND  QUESTIONS  OF  FACT.     437 

judge  must  gather  as  he  goes  along;  informing  himself  upon  the 
evidence,  and  observing  what  facts  are  controverted,  and  what 
facts  are  not  controverted,  which  bear  upon  the  meaning  of  the 
claim,  in  reference  to  its  extent.^  If  the  facts  material  to  the 
construction  are  not  left  in  doubt  on  the  evidence,  the  construc- 
tion will  be  given  to  the  jury,  absolutely  ;  but,  if  the  evidence 
requires  a  finding  of  facts  by  the  jury,  the  construction  will  be 
given  to  them  conditionally.^ 

<§.  391.  Among  the  facts  which  will  thus  exercise  an  impor- 
tant influence  on  the  extent  of  the  claim,  is  the  previous  exist- 
ence of  something  mentioned  in  the  specification.  If  it  is  man- 
ifest on  the  face  of  the  terms,  in  which  the  patentee  has 
described  his  invention,  that  he  has  included  something  of 
which  he  was  not  the  inventor,  his  patent  cannot  be  allowed  to 
cover  it.  But  it  may  be  doubtful,  whether  he  has  so  included 
the  thing,  which  the  evidence  shows  to  be  old  ;  and  then  the 
degree  or  extent  to  which  that  thing  was  known  before,  its 
great  familiarity  and  constant  use  for  analogous  purposes,  will 
be  important  elements  in  the  question,  whether  the  patentee  has 
claimed  it  as  of  his  own  invention.  This  consideration  has 
given  rise  to  the  rule,  that  the  patentee  is  to  be  presumed  not 
to  intend  to  claim  things  which  he  must  know  to  be  in  use ; 
which  is  only  another  application  of  the  broader  rule,  that  a 
specification  should  be  so  read,  as,  consistently  with  the  fair 
import  of  language,  will  make  the  claim  coextensive  with  the 
actual  discovery  or  invention.^ 

<§,  392.  Another  important  consideration  will  be  the  state  of 
the  art.  If,  for  instance,  a  patent  contemplates  the  use  of  cer- 
tain substances,  although  it  may  make  use  of  terms  extensive 


'  Per  Lord  Abinger,  C.  B.,  in  Neilson  v.  Harford,  Webs.  Pat.    Cas. 
350,351. 

*  Ibid.  p.  370. 

'  Haworth  v.  Hardcastle,  Webs.  Pat.  Cas.  484,  485. 
37* 


438  LAW     OF     PATENTS. 

enough  to  embrace  other  substances,  which,  in  the  progress  of 
the  art,  have  been  ascertained  to  be  capable  of  the  same  use, 
but  at  the  time  of  the  patent  were  not  known  to  be  so,  or,  being 
known  at  the  time  to  be  capable  of  .the  same  use,  were  yet  so 
expensive  as  not  to  be  expected  to  be  in  use  for  the  same  pur- 
pose, the  general  terms  of  the  specification  will  be  so  interpreted 
as  to  include  only  those  substances  ejusdem  generis  with  the 
particular  substances  mentioned,  which  may  reasonably  be  sup- 
posed, on  the  state  of  the  art,  to  have  been  contemplated  at  the 
time.     This  is  to  be  ascertained  by  evidence. 

<§,  393.  Thus,  on  a  specification  describing  "  An  improved 
Gas  apparatus,  for  the  purposes  of  extracting  inflammable  gas 
by  heat,  from  pit  coal,  or  tar,  or  any  other  substance  from 
which  gas,  or  gasses  capable  of  being  employed  for  illumination 
can  be  extracted  by  heat;  "  it  appeared  that  it  was  known,  at 
the  date  of  the  patent,  as  a  philosophical  fact,  that  oil  would 
yield  inflammable  gas,  but  that  the  apparatus  described  in  the 
specification  could  not  be  used- advantageously,  if  at  all,  for  the 
making  of  gas  from  oil ;  it  was  answered,  that  it  was  a  general 
opinion  at  the  time,  that  nothing  but  coal  would  be  cheap 
enough  for  purposes  of  illumination  ;  and  the  court  held  that 
the  patentee  must  be  understood  to  mean  things  that  were  in 
use,  and  not  every  thing  which  would  produce  gas,  but,  from 
being  so  expensive,  was  never  expected  to  be  in  use.^ 

<^  394.  Sometimes,  the  construction  may  rest  on  facts,  which 
are  so  referred  to  as  to  make  a  part  of  the  description  and  to 
govern  it.  If  these  facts  are  controverted,  they  are  to  be  left 
to  the  jury.  But  if  they  are  proved,  or  admitted,  the  court 
will  take  notice  of  them  in  giving  a  legal  construction  to  the 
instrument.  Thus,  where  the  question  was,  whether,  in  the  spe- 
cification of  an  improvement  in  the  macliine,  known  by  the 
name  of  speeder,  double-speeder,  or  fly-frame,  used  for  roving 

'  Crossley  v.  Beverley,  Webs.  Pat.  Cas.  106,  107,  108. 


QUESTIONS    OF    LAW    AND    QUESTIONS    OF    FACT.  439 

cotton,  preparatory  to  spinning,  the  patentee  had  confined  him- 
self to  the  use  of  the  bow-flyer,  that  is,  a  flyer  in  "one  continu- 
ous piece,"  as  part  of  his  new  combination  ;  it  appeared  that 
the  specification  thus  described  the  invention  :  "  It  will  be  seen 
that  the  flyers,  as  used  by  me,  and  shown  at,  &,c.,  are  made  in 
one  continuous  piece,  instead  of  being  open  at  the  bottom,  as 
is  the  case  with  those  generally  used  in  the  English  fly-frame, 
and  this,  among  other  reasons,  enables  me  to  give  the  increased 
velocity  above  referred  to."  The  patentee  then  summed  up  his 
claim,  as  follows  :  "  What  I  claim  as  new,  &,c.,  is  the  arrange- 
ment of  the  spindles  and  flyers,  in  two  rows,  zn  combination 
with  the  described  arrangement  of  gearing,''  which  he  l»ad 
previously  pointed  out.  Although  the  language  here  did  not 
admit  of  much  doubt,  as  to  the  kind  of  flyer  intended  to  be 
claimed,  the  court  took  notice  of  the  admitted  or  apparent  facts, 
which  tended  to  show  that  the  bow-flyer  alone  was  intended  ; 
one  of  which  was,  that  the  bow-flyer  alone  could  be  geared,  as 
the  patentee  had  described  his  flyer  to  be,  in  two  places,  through 
its  bottom  ;  the  other  form  of  the  open-flyer  having  no  bottom 
susceptible  of  being  used  or  geared  in  that  manner.^ 

»  Davoll  V.  Brown,  I  Wood.  &  M.  53,  53,  59,  60.  In  this  case,  Mr. 
Justice  Woodbury  said  :  "  The  construction  seldom  rests  on  facts  to  be 
proved  by  parol,  unless  they  are  so  referred  to,  as  to  make  a  part  of  the 
description  and  to  govern  it;  and  when  it  does  at  all  depend  on  them,  and 
they  are  proved  or  admitted,  and  are  without  dispute,  as  here,  it  is  the  duty 
of  the  court,  on  these  facts,  to  give  the  legal  construction  to  the  instrument. 
But,  whether  the  court  gave  the  right  construction  to  the  patent  in  dispute, 
so  far  as  regards  the  kind  of  flyer  to  be  used  in  it,  is  a  proper  question  for 
consideration  now;  and,  if  any  mistake  has  occurred  in  relation  to  it,  in  the 
hurry  and  suddenness  of  a  trial,  it  ought  to  be  corrected,  and  will  be  most 
cheerfully.  There  is  no  doubt,  as  to  the  general  principle  contended  for  by 
the  defendant  in  this  case,  that  a  patentee  should  describe,  with  reasonable 
certainty,  his  invention.  Several  reasons  exist  for  this.  One  is,  the  Act  of 
Congress  itself  requires,  that  he  '  shall,  particularly,  specify  and  point  the 
part,  improvement,  or  combination,  which  he  claims  as  his  own  invention.' 
And  another  is,  that,  unless  this  is  done,  the  public  are  unable  to  know 
whether  they  violate  the  patent  or  not,  and  are  also  unable,  when  the  term 
expires,  to  make  machines  correctly,  and  derive  the  proper  advantages  from 


440  LAW    OF    PATENTS. 

<§.  395.  The  sufficiency  of  the  description,  to  enable  compe- 

the  patent.  These  principles,  however,  are  not  inconsistent  with  another 
one,  equally  well  settled,  which  is,  that  a  liberal  construciion  is  to  be  given 
to  a  patent,  and  inventors  sustained,  if  practicable,  without  a  departure  from 
sound  principles.  Only  thus  can  ingenuity  and  perseverance  be  encouraged 
to  exert  themselves,  in  this  way,  usefully  to  the  comniunily  ;  and  only  in  this 
way  can  we  protect  intellectual  property,  the  labors  of  the  mind,  prdduciions 
and  interests,  as  much  a  man's  own,  and  as  much  the  fruit  of  his  honest 
industry,  as  the  wheat  he  cultivates,  or  the  flocks  he  rears.  Grant  v.  Ray- 
mond, 6  Peters,  218  ;  See  also  Ames  v.  Howard,  1  Sumn.  482,  485  ;  Wyeth 
V.  Stone,  1  Story,  273,  287;  Blanchard  u.  Sprague,  2  Story,  164.  —  The 
patent  laws  are  not  now  made  to  encourage  monopolies  of  what  before 
belonged  to  others,  or  to  the  public,  —  which  is  the  true  idea  of  a  mono- 
poly, —  but  the  design  is  to  encourage  genius  in  advancing  the  arts,  through 
science  and  ingenuity,  by  protecting  its  productions  of  what  did  not  before 
exist,  and  of  what  never  belonged  to  another  person  or  the  public.  — In  this 
case,  therefore,  the  jury  were  instructed  to  consider  the  case  under  these 
liberal  views,  unless  the  invention,  such  as  the  court  construed  it  to  be,  in 
point  of  law,  was  described  with  so  much  clearness  and  certainty,  that  other 
machines  could  readily  be  made  from  it,  by  mechanics  acquainted  with  the 
subject. 

"  Looking  to  the  whole  specification  and  drawing,  both  the  figure  and  lan- 
guage, could  any  one  doubt  that  bow-flyers  were  intended  to  be  used  in  the 
new  combination  which  was  patented?  The  figure  is  only  that  of  a  bow- 
flyer,  so  is  the  language.  First,  the  spindles  are  described  as  working  up 
and  down  '  through  the  bottom  of  the  flyers,  as  seen  at  a,'  which  is  not  pos- 
sible in  the  case  of  the  open-flyer,  as  that  has  no  bottom  for  the  spindle  to 
work  in. 

Again,  the  specification  says,  "to  the  bottom  of  each  flyer  a  tube  is 
attached,  as  seen  at  b.,  figures  1  and  2,"  which  is  impracticable  with  an  open 
flyer.  Again,  it  says,  motion  is  communicated  to  the  flyer  independently, 
but  that  is  not  feasible  with  the  open  flyer.  And  finally,  towards  the  close, 
in  order  to  remove  all  possible  doubt,  the  specification  adds,  "  it  will  be  seen, 
that  the  flyers,  as  used  by  me,  and  shown  at  ii  and  kk,  are  made  in  one  con- 
tinuous piece,  instead  of  being  open  at  the  bottom,  as  is  the  case  with  those 
generally  used  in  the  English  fly-frames."  All  know,  that  the  flyer  in  one 
continuous  piece  is  the  bow-flyer.  Besides  this,  other  admitted  or  apparent 
facts  tended  to  show  that  the  bow-flyer  alone  was  intended.  One  great 
advantage,  claimed  from  the  new  combination  in  the  patent,  was  an  increased 
velocity  of  the  spindle.  Thus,  in  the  early  part  of  the  specification,  it  is 
staled,  among  the  advantages  of  his  improvement,  that  "the  machine  will 
bear  running  at  a  much  higher  velocity  than  the  English  fly-frame."     And 


QUESTIONS    OF    LAW    AND    QUESTIONS    OF    FACT.  441 

tent  persons  to  apply  the  invention,  is  a  question  of  fact  for  the 
jur)',  on  the  testimony  of  experts  and  the  language  itself.^  But 
it  does  not  follow  from  this,  that  the  construction  of  the  specifi- 
cation is  to  be  drawn  into  the  province  of  the  jury.  Their  pro- 
vince is,  after  having  been  informed  what  the  specification  has 
said,  to  determine  whether  the  directions  are  sufllciently  clear 

towards  the  close  he  says,  that  it  is  the  use  of  the  flyer  in  "  one  continuous 
piece,"  that  is,  the  bow-flyer,  instead  of  the  open  one,  as  in  the  English  fly- 
frame,  which,  "  among  other  reasons,  enables  me  to  give  the  increased  velo- 
city above  referred  to."  How  could  there,  then,  be  any  reasonable  doubt, 
that  in  his  patent  it  was  this  bow-flyer  he  intended  to  use  in  his  new 
combination  1 

In  truth  he  not  only  says  so,  and  could  not  otherwise  obtain  one  of  his 
principal  objects  and  advantages,  but  it  is  manifest  from  the  form  of  the  flyer 
itself,  and  was  not  doubted  at  the  trial,  that  only  the  bow-flyer  could  be 
geared,  as  he  described  his  flyer  to  be,  in  two  places,  through  its  bottom; 
the  other  form  of  the  open  flyer  confessedly  having  no  bottom  susceptible  of 

being  used,  or  geared  in  this  manner There  was 

no  fact  in  doubt  about  this,  to  be  left  to  the  jury  ;  and  there  was  but  one  con- 
struction as  to.  the  kind  of  flyer  intended  to  be  used,  that  was  consistent 
either  with  the  drawings,  or  the  express  language  employed,  or  the  chief 
object  of  the  machine  in  its  increased  velocity,  or  in  the  practicability 
of  gearing  it  in  the  manner  before  described  by  him  in  two  important 
particulars,  or  of  giving  motion  to  it  "  independently."  It  is  as  clear 
and  decisive  on  this  point  as  if  he  had  said  the  before  described  spindles 
and  flyers,  because  he  says  the  spindles  and  flyers  "with  the  described 
arrangement  of  the  gearing,"  and  no  other  spindles  or  flyers,  but  the  short 
spindles  and  bow-flyers  could  be  geared  in  the  manner  before  described, 
through  the  bottoms  of  the  latter. 

Matters  like  these  must  be  received  in  a  practical  manner,  and  not  decided 
on  mere  metaphysical  distinctions.  Crossley  r.  Beverley,  3  Car.  &  Payne, 
513,514. 

Taking  with  us,  also,  the  settled  rules,  that  specifications  must  be  sustained 
if  they  can  be  fairly,  (Russell  v.  Cowley,  1  Cromp.  Mees.  &  Rose.  864, 
866;  Wyeth  v.  Stone,  1  Story,  273,  287,)  that  we  should  not  be  astute  to 
avoid  inventions,  and  that  it  is  a  question  for  the  court,  and  not  the  jury, 
whether  the  specification  can  be  read  and  construed  intelligibly  in  a*  particu- 
lar way,  (Whitney  v.  Emmett,  Baldw.  303,  315;  Blanchard  v.  Sprague,  2 
Story,  164,  169,)  we  think  the  instructions  given  at  the  trial  in  this  case  were 
correct,  and  that  no  suflScienl  ground  has  been  shown  for  a  new  trial." 

'  Lowell  V.  Lewis,  1  Mason,  190,  191. 


442  LAW    OF     PATENTS. 

and  explicit,  to  enable  a  competent  workman  to  practise  the 
invention.  The  information  of  what  the  specification  has  said, 
is  to  come  from  the  court ;  although  it  may  happen,  that  in  deter- 
mining the  meaning  of  the  specification  the  aid  of  the  jury  will 
be  required  to  ascertain  the  meaning  of  words  of  art,  or  the 
surrounding  circumstances,  which  govern  that  meaning.  When 
such  words  of  art,  or  such  surrounding  circumstances  do  affect 
the  meaning,  the  court  will  instruct  the  jury  that  the  specifica- 
tion has  said  so  and  so,  according  as  they  find  the  meaning  of 
the  scientific  terms,  or  the  existence  of  the  surrounding  circum- 
stances. But  if  there  are  no  words  of  art,  and  no  surrounding 
circumstances,  to  be  ascertained,  the  court,  as  we  have  seen, 
will  instruct  the  jury  what  the  specification  has  said  ;  and  then 
the  jury  will  determine,  the  specification  having  said  so  and  so, 
whether  the  description  is  sufficient  to  enable  a  competent  work- 
man to  put  the  invention  in  practice.^ 

<§>  396.  There  is  no  positive  rule  by  which  it  can  be  determined, 
in  a  given  case,  a  priori,  whether  the  meaning  of  words  of  art, 
or  the  bearing  of  surrounding  circumstances,  affects  the  sense 
of  the  specification ;  or  which  limits  the  right  of  the  plaintiff  to 
offer  evidence  to  show  that  its  meaning  is  so  affected.  The 
plaintiff  is  always  entitled  to  say,  that  his  specification  requires 
the  explanation  of  facts,  to  determine  the  extent  of  his  claim 
and  the  character  of  his  invention  ;  and  the  only  course  that 
can  be  taken  is,  for  the  court  to  receive  and  watch  the  evidence, 
and  lo  apply  it  to  the  construction,  taking  care  that  it  be  not 
allowed  to  go  so  far  as  to  supply  positive  omissions,  which  would 
render  the  specification  defective.  Within  this  limit,  the  con- 
struction, which  is  nothing  more  than  the  ascertaining  of  the 

'  It  follows,  from  the  proposition  that  the  court  are  to  declare  what  the 
specification  has  said,  that  is  also  a  question  of  law  upon  the  construction  of 
the  specification,  whether  the  invention  has  been  specifically  described  with 
reasonable  certainty.  This  is  a  distinct  question  from  the  intelligibility  of 
the  practical  directions,  although  both  may  arise  upon  the  same  passages. 
Ante,<^^  123,  124,  126,  note  2;  130,  134,  note  3 ;   136,  note  1,  2. 


QUESTIONS  OF  LAW  AND  QUESTIONS  OF  FACT.      443 

meaning  of  what  is  written,  may  always  be  affected  by  evi- 
dence ;  which  is  to  be  taken  into  view,  although  no  conflict 
arises,  requiring  a  finding  of  the  jury,  because  the  court  can 
have  no  judicial  knowledge  either  of  the  terms  of  art,  or  of  the 
surrounding  circumstances,  and  cannot  say,  until  it  has  heard 
the  evidence,  that  the  meaning  is  not  to  be  affected  by  them. 

<§>  397.  The  provinces  of  the  court  and  the  jury,  then,  are  dis- 
tinct, and  upon  this  particular  question  of  the  practicability  of 
the  specification,  it  is  of  consequence  that  they  should  not  be 
confounded.  When  it  is  put  to  a  jury  to  determine  whether 
a  specification  has  so  fully  and  accurately  described  the  inven- 
tion, that  others  can  practise  it  from  the  description,  the  danger 
sometimes  arises,  of  their  undertaking  to  determine  what  the 
claim  is ;  because  the  extent  and  character  of  the  claim  itself 
may  depend  on  the  san.e  words,  on  which  they  are  to  decide 
the  intelligibility  of  the  directions,  and  may  thus  seem  to  be ' 
inseparably  blended  with  the  question  of  that  intelligibility. 
But  in  truth  these  questions  are  always  separable,  and  care 
should  be  taken  to  separate  then).  In  one  aspect,  every  thing 
is  for  the  jury,  which  bears  on  the  question,  whether  the  speci- 
fication sufficiently  describes  the  mode  of  carrying  the  invention 
into  effect ;  but,  on  the  other  hand,  the  meaning  of  the  very 
passages  on  which  this  question  arises,  in  relation  to  the  prior 
question  of  what  the  specification  has  said,  is  for  the  court, 
after  the  facts  which  bear  upon  that  meaning  have  been 
ascertained. 

<§>  39S.  The  case  of  Neilson  v.  Harford  presents  an  apt  illus- 
tration of  the  nicety  and  importance  of  these  distinctions.  Mr. 
Neilson  invented  the  application  of  the  hot  blast  to  smelting 
furnaces,  by  introducing  between  the  blowing  apparatus  and  the 
furnace  a  chamber  or  receptacle,  in  which  the  air  was  to  be 
heated  on  its  passage,  before  it  entered  the  furnace.  After 
describing  the  mode  in  which  this  was  to  be  accomplished,  his 
specification  said,  "  The  form  or  shape  of  the  vessel  or  recepta- 


444  LAW     OF      PATENTS. 

cle  [the  vessel  in  which  the  air  was  to  be  heated]  is  immaterial 
to  the  effect,  and  may  be  adapted  to  the  local  circumstances  or 
situation."  This  direction  it  was  contended  was  calculated  to 
mislead  a  workman,  because  it  was  not  true ;  it  was  said,  in 
point  of  fact,  that  the  size  or  shape  of  the  heating  vessel  was 
immaterial  to  the  "  effect "  on  the  air  in  that  vessel  ;  and  this, 
it  was  argued,  was  the  "  effect "  concerning  which  this  delusive 
statement  was  made  in  the  specification.  On  the  other  hand, 
the  plaintiff  contended  that  the  meaning  of  this  passage  was, 
that  the  size  and  shape  of  the  heating  vessel  were  immaterial 
to  the  effect  on  the  furnace,  and  that  it  was  true,  in  point  of 
fact,  that  some  beneficial  effect  might  be  produced  on  the  fur- 
nace, whatever  the  size  or  shape  of  the  heating  vessel  might  be, 
provided  the  temperature  of  the  air  be  sufficiently  raised. 

<§>  399.  The  principal  question  raised  upon  the  pleadings  was, 
whether  the  directions  were  calculated  to  mislead  a  workman 
who  might  be  employed  to  construct  such  an  apparatus,  by  stat- 
ing that  which  was  not  true.  This,  it  was  allowed,  was  a  ques- 
tion for  the  jury,  but  before  it  could  be  determined,  it  was  neces- 
sary to  ascertain  what  the  specification  had  said  ;  since  the  fact 
of  its  having  or  not  having  stated  what  was  not  true,  would 
depend  altogether  upon  the  sense  in  which  the  words  were  to 
be  received.  At  the  trial,  the  presiding  judge  construed  the 
word  "  effect "  to  mean  the  effect  on  the  air  in  the  heating  ves- 
sel ;  and  the  jury  having  found  that  the  size  and  shape  of  the 
heating  vessel  were  material  to  the  extent  of  beneficial  effect 
produced,  a  verdict  was  entered  for  the  defendants. 

<§>  400.  Upon  a  motion  to  enter  the  verdict  for  the  plaintiff, 
on  this  issue,  founded  on  the  special  verdict,  which  also  ascer- 
tained that  some  beneficial  result  would  be  produced  from  any 
shape  of  the  heating  vessel,  it  was  argued  with  great  force  and 
ingenuity,  that  the  question  being  whether  the  specification 
could  or  could  not  be  carried  into  effect,  which  is  confessedly 
a  question  for  the  jury,  the  whole  question  of  the  meaning  of 


QUESTIONS  OF  LAW  AND  QUESTIONS  OF  FACT.      445 

the  passages  on  which  they  were  to  decide  the  sufficiency  of 
the  specification,  was  also  for  the  jury,  who  were  to  say  whether 
the  words  were  or  were  not  sufficient  for  carrying  into  practical 
effect  the  invention  or  discovery,  which  the  patentee  supposed 
he  had  made.  It  was  further  argued,  that  the  meaning  of  the 
words  depended  upon  evidence  ;  whereas,  if  the  court  were  to 
pass  upon  the  meaning  of  the  paper,  they  must  act  upon  the 
written  paper  alone,  without  evidence.  But  the  court  laid  down 
the  doctrine  that  in  all  cases  the  meaning  of  the  specification  is 
for  the  court ;  and,  although  the  question  which  goes  to  the  jury 
is  whether  the  directions  in  the  specification  are  sufficient  or 
not,  it  is  necessary  for  the  court  to  declare  what  the  specifica- 
tion has  said.  This  must  be  done,  either  by  taking  into  view 
at  the  time  the  evidence  which  bears  upon  the  meaning,  where 
it  is  not  controverted,  or  by  leaving  to  the  jury,  as  matters  of 
fact,  to  pass  upon  that  evidence,  in  order  to  ascertain  the  mean- 
ing of  scientific  words,  or  the  surrounding  circumstances  on 
which  the  construction  depends.  In  the  one  case,  the  construc- 
tion is  given  absolutely  ;  in  the  other,  it  is  given  conditionally, 
because  dependent  upon  facts  to  be  found  by  the  jury.^ 


'  Neilson  v.  Harford,  Webs.  Pat.  Cas.  295,  349.  Sir  W.  Follett  argued 
as  follows  :  "  I  submit  to  your  lordships  that  the  whole  question  upon  the 
validity  of  the  specification,  that  is,  on  the  meaning  of  the  specification,  and 
whether  it  can  or  cannot  be  carried  into  effect,  is  a  question  for  the  jury  and 
not  for  the  court,  and  that  the  jury  are  to  put  their  construction  upon  the 
meaning  of  the  words,  and  that  the  jury  are  to  say  whether  the  words  are 
or  not  sufficient,  and  that  it  is  for  them  to  say,  whether  the  specification  does 
sufficiently  show  the  mode  of  carrying  the  invenlion  and  discovery  which  the 
patentee  supposed  he  had  made,  into  practical  effect.  [Lord  Abinger,  C.  B.  : 
Why  is  the  specification,  which  is  a  written  instrument,  more  particularly  to 
be  considered  by  a  jury,  than  any  other  instrument?  The  meaning  of  sci- 
entific words  must  be  matter  of  evidence.]  [Alderson  B.  :  The  construction 
of  it  is  surely  for  the  court.]  I  do  not  know  quite  the  extent  to  which  it  is 
supposed  the  authorities  have  gone  in  stating  that  certain  papers  are  for  the 
court.  In  many  cases,  undoubtedly,  written  papers  are  for  the  court,  but  I 
apprehend  that  is  by  no  means  a  general  doctrine  of  law  ;  but  that  written 
papers,  which  involve  a  question  of  fact  like  this,  whether  or  not  the  party 
has  sufficiently  described  the  invention,  that  that  written  paper  is  for  the  jury 
38 


446  LAW    OF    PATENTS. 

<§,401.  The  question  whether  the  invention  disclosed  by  the 
specification  is  a  proper  subject  for  a  patent,  is  a  question  of 


and  not  for  the  court,  because  it  is  for  the  jury  to  say,  as  a  matter  of  fact, 
whether  there  be  or  not  a  sufficient  description  in  that  instrument  to  enable 
parties  to  carry  it  into  effect.  That  I  apprehend  to  be  a  question  entirely 
for  the  jury.  Certainly,  the  whole  of  this  is  a  question  of  evidence,  and  a 
question  of  fact.  It  is  a  question  of  fact  as  relates  to  the  paper  ;  it  is  a 
question  of  fact  as  regards  the  evidence  at  the  trial ;  it  is  not  a  question  of 
law  at  all  ;  and  I  do  not  know  any  rule  which  is  to  say  that  the  court  is  to 
construe  that  specification,  and  to  take  it  from  the  jury,  because,  supposing 
the  fact  to  be  that  evidence  was  given  at  the  trial  on  scientific  matters,  which 
evidence  would  aid  the  meaning  or  the  construing  of  the  instrument,  your 
lordships  can  have  no  judicial  notice  of  that  at  all.  If  it  be  a  written  paper 
for  your  lordships  to  decide  upon,  it  must  be  without  evidence.  It  is  not 
that  your  lordships  can  come  to  a  conclusion  upon  the  meaning  of  the  paper 
by  looking  at  the  evidence  at  the  trial,  but  if  it  comes  within  the  rule,  that 
is  a  written  paper  which  the  court  is  to  act  upon,  then  it  must  act  upon  the 
written  alone.  I  think  I  can  show  your  lordships  that  in  every  single  case 
in  which  any  question  has  arisen,  it  has  been  submitted  to  the  jury,  not 
decided  by  the  court.  [Lord  Abinger,  C.  B.  :  Not  consistently  with  my 
recollections ;  I  have  always  thought  that  the  meaning  of  the  specification 
was  to  be  determined  by  the  court.  That  meaning  may  be  varied  by  the 
evidence  of  particular  words.  A  man  must  gather  as  he  goes  along  in  order 
to  construe  the  written  instrument.  It  is  quite  new  to  me  that  it  is  not  to 
be  considered  by  the  court.]  [Alderson  B.  :  Surely  the  court  is  to  tell  the 
jury  what  the  specification  has  said.  If  the  specification  contains  words  of 
art,  the  court  is  to  say  —  If  you  believe  these  words  of  art  to  mean  so  and 
so,  the  specification  has  said  so  and  so  ;  leaving  the  question  of  words  of  art 
to  the  jury.  But  if  there  are  no  words  of  art,  what  the  specification  has 
said  is  to  be  construed  by  the  court.  Then  it  is  to  be  left  to  the  jury,  whether 
the  specification  having  so  said,  it  is  or  not  a  sufficient  description  of  the 
invention  according  to  their  judgment.]  I  do  not  mean  the  validity  of  the 
specification  as  to  questions  in  which  you  may  direct  nonsuits  in  point  of 
law  arising  out  of  objections  of  a  different  kind,  but  that  this  question, 
whether  or  not  the  specification  sufficiently  describes  the  mode  of  carrying 
the  invention  into  effect,  that  every  thing  relating  to  that  is  for  the  jury,  and 
not  for  the  court  —  the  meaning  of  the  passages  in  the  specification,  and 
every  thing.  I  should  submit  to  your  lordships  that  the  whole  of  it  was  for 
he  jury,  and  not  for  the  court.  [Alderson,  B.  :  That  there  are  some  things 
n  the  specification  which  are  questions  of  fact  is  true,  and  there  are  some 
things  in  the  specification  which  are  questions  of  law  ;  the  construction  is  to 
e  given  by  the  court,  but  the  intelligibility  of  it  is  for  the  jury.]     That  is 


QUESTIONS  OF  LAW  AND  QUESTIONS  OF  FACT.     447 

law,  on  which  the  court  will  instruct  the  jury.  It  may  involve 
the  finding  of  a  variety  of  facts ;  but  when  the  facts  are  all 
ascertained,  it  is  purely  a  question  of  law,  whether  the  inven- 
tion or  discovery  is  a  patentable  subject.  This  is  a  distinct  and 
very  different  question  from  that  of  the  novelty  of  the  inven- 
tion. The  thing  claimed  as  the  subject  of  a  patent  may  be 
entirely  new,  and  yet  it  may  not  fall  within  that  class  of  discov- 
eries or  inventions  recognized  by  the  patent  law  as  the  subjects 
of  patents,  and  as  such  comprehended  within  the  description  of 
the  statute.  Thus,  the  subject-matter  may  turn  out  to  be  the 
application  of  an  old  or  well-known  thing,  to  a  new  purpose, 
constituting  a  new  use  only  so  far  as  the  occasion  is  concerned  ; 
which  the  law  decides  is  not  the  subject  of  a  patent.^  Or,  on 
the  other  hand,  the  claim  may  be  for  the  use  of  a  known  thing 
in  a  known  manner,  to  produce  effects  already  known,  but  pro- 
ducing those  effects  so  as  to  be  more  economically  or  benefi- 
cially enjoyed  by  the  public ;  which  the  law  decides  is  a 
patentable  subject.^  In  these  and  other  cases,  where  the  ques- 
tion arises,  upon  all  the  facts  attending  and  surrounding  the 
cdleged  invention,  whether  it  is  a  patentable  subject,  it  is  for  the 
court  to  settle  that  question.  Of  course,  the  novelty  of  the 
invention  is  a  pre-requisite  to  the  validity  of  the  patent,  and 
this  is  a  question  of  fact ;  but  the  alleged  invention  being  ascer- 
tained to  be  new,  it  is  still  to  be  determined  whether  it  is  that 
species  of  invention  to  which  the  law  gives  the  protection  of  a 
patent. 


all  I  am  contending.  [Lord  Abinger,  C.  B.  ;  The  intelligibility  means  with 
reference  to  words  of  science,  or  matters  in  it  which  persons  may  explain  so 
as  to  satisfy  the  jury.  You  are  discussing  an  abstract  principle  where  it  is 
not  necessary  ;  if  you  take  an  abstract  principle,  I  must  say  the  meaning  of 
the  specification  is  a  matter  of  law,  and  that  the  judge  must  be  informed,  by 
evidence,  of  the  facts,  and  then  he  must  leave  those  facts  to  the  jury,  for 
them  to  find  whether  they  be  true  or  not.]     See  also  Ante,  note. 

>  Losh  V.  Hague,  Webs.  Pat.  Cas.  202,  207;  Howe  v.  Abbott,  2 
Story's  R. 

*  Crane  v.  Price,  Webs.  Pat.  Cas.  408,  409. 


448  LAW    OF    PATENTS. 

<§(  402.  The  question  of  infringement  is,  as  has  already  been 
stated,  a- question  whether  the  invention  of  the  defendant  is  sub- 
stantially the  same  thing  as  that  of  the  plaintiff.  The  identity 
of  two  things  is  a  matter  of  fact,  depending  upon  evidence ; 
and  although  it  is  to  be  determined  under  the  guidance  of  those 
principles  which  determine  what  constitutes  identity  and  diver- 
sity in  the  sense  of  the  patent  law,  yet  it  is  for  the  jury  to  deter- 
mine, as  matter  of  fact,  under  proper  instructions,  whether  the 
two  things  are  the  same  or  different.' 

'  Boulton  V.  Bull,  2  H.  Bl.  4  ;  Whittemore  v.  Cutter,  1  Gallis.  478;  Pen- 
nock  V.  Dialogue,  4  Wash.  538;  Lowell  v.  Lewis,  1  Mason,  191  ;  Phillips 
on  Patents,  431. 


CHAPTER   VI. 

JDKTSDICTION    OF    CONGRESS    AND    THE    FEDERAL    COURTS. 

<§>  403.  The  Constitution  of  the  United  States  confers  upon 
Congress  power  "to  promote  the  progress  of  science  and  useful 
arts  by  securing  for  hmited  times  to  authors  and  inventors  the 
exclusive  right  to  their  respective  writings  and  discoveries." 
This  power  is  general ;  there  is  no  distinction  which  limits  it 
to  cases  where  the  invention  has  not  been  known  or  used  by 
the  public.  Accordingly,  it  is  well  settled,  that  Congress  may 
pass  general  or  special  laws,  in  favor  of  inventors ;  and  they 
may  leave  a  particular  inventor  to  the  protection  afforded  by  a 
general  law,  or  they  may  specially  exempt  his  case  from  the 
operation  of  a  general  law,  by  extending  his  exclusive  right 
beyond  the  term  fixed  by  such  general  law.  This  may  be  done 
after  the  invention  has  been  in  the  possession  of  the  public,  as 
well  as  before  ;  for  when  the  exclusive  privilege  has  once  been 
secured,  the  grant  does  not  imply  an  irrevocable  contract  with 
the  public,  that,  at  the  expiration  of  the  period,  the  invention 
shall  become  public  property.^ 

<5,  404.  Congress,  therefore,  has  power  to  pass  an  act  which 
will  operate  retrospectively  to  give  a  patent  for  an  invention  which 
is  already  in  public  use ;  but  no  act,  it  has  been  said,  ought 
to  be  construed  to  operate  retrospectively,  unless  such  a  con- 
struction is  unavoidable.^ 


»  Evans  v.  Eaton,  3  Wheaton,  545  ;  S.  C.  Peters  Circ.  C.  R.  322 ;  Evans 
V.  Heitich,  7  Wheat.  453  ;  Blanchard  v.  Sprague,  2  Story's  R.  164;  S.  C. 
3  Sumner,  535 ;  Woodworth  v.  Hall,  1  Woodb.  &  M.  248. 

«  Blanchard  v.  Sprague,  ut  supra.  Letters-patent  were  granted  to  t;fic 
38* 


450  LAW     OF     PATENTS. 

<§)  405.  The  Act  of  Congress,  of  July  4,  1836,  -^  17,  declares, 
"  that  all  actions,  suits,  controversies,  and  cases  arising  under 


plaintiff,  Thomas  Blanchard,  on  the  6th  of  September,  1819  ;  and  being 
deemed  inoperative,  by  reason  of  defects  in  the  specification,  new  letters- 
patent  were  granted  on  the  20th  of  January,  1820,  for  the  space  of  fourteen 
years.  Afterward,  by  Act  of  Congress,  passed  the  30th  of  June,  1834,  the 
sole  right  was  granted  to  the  plaintiff,  to  make,  use,  and  vend  his  invention 
for  the  term  of  fourteen  years,  from  the  12th  of  January,  1834.  This  act 
not  being  thought  to  describe  with  sufficient  accuracy  the  letters-patent,  to 
which  it  was  intended  to  refer,  an  additional  act  was  passed  on  the  6th  of 
February,  1839,  renewing  the  act  of  the  30th  of  June,  1834,  and  correcting 
the  date  of  the  12th  of  January,  1834,  to  the  20ih  of  January,  1834.  This 
last  act  was  as  follows  :  "  An  Act  to  amend  and  carry  into  effect  the  intention 
of  an  Act  entitled  An  Act  to  renew  the  Patent  of  Thomas  Blanchard,  approved 
June  30th,  1834.  Sec.  1.  Be  it  enacted,  &c..  That  the  rights  secured  to 
Thomas  Blanchard,  a  citizen  of  the  United  States,  by  letters-patent  granted 
on  the  sixth  of  September,  eighteen  hundred  and  nineteen,  and  afterwards 
on  a  corrected  specification  on  the  tweiitieth  day  of  January,  Anno  Domini 
eighteen  hundred  and  twenty,  be  granted  to  the  said  Blanchard,  his  heirs  and 
assigns,  for  the  further  term  of  fourteen  years  from  the  20th  of  January, 
eighteen  hundred  and  thirty-four,  said  invention  so  secured  being  described 
in  said  last-mentioned  letters  as  an  engine  for  turning  or  cutting  irregular 
forms  out  of  wood,  iron,  brass,  or  other  material  which  can  be  cilt  by  ordi- 
nary tools.  Provided,  that  all  rights  and  privileges  heretofore  sold  or 
granted  by  said  patentee  to  make,  construct,  use,  or  vend  the  said  invention, 
and  not  forfeited  by  the  purchasers  or  grantees,  shall  enure  to  and  be  enjoyed 
by  such  purchasers  or  grantees  respectively,  as  fully  and  upon  the  same 
conditions  during  the  period  hereby  granted  as  for  the  term  that  did  exist 
when  such  sale  or  grant  was  made.  Sec.  2.  And  be  it  further  enacted,  that 
any  person  who  had  bo7id  fide  erected  or  constructed  any  manufacture  or 
machine  for  the  purpose  of  putting  said  invention  into  use.  in  any  of  its 
modifications,  or  was  so  erecting  or  constructing  any  manufacture  or  machine 
for  the  purpose  aforesaid,  between  the  period  of  the  expiration  of  the  patent 
heretofore  granted  on  the  thirtieth  day  of  June,  one  thousand  eight  hundred 
and  thirty-four,  shall  have  and  enjoy  the  right  of  using  said  invention  in  any 
such  manufacture  or  machine  erected  or  erecting  as  aforesaid,  in  all  respects 
as  though  this  act  had  not  passed.  Provided,  that  no  person  shall  be  entitled 
to  the  right  and  privilege  by  this  section  granted,  who  has  infringed  the 
patent  right  and  privilege  heretofore  granted,  by  actually  using  or  vending 
said  machine  before  the  expiration  of  said  patent,  without  grant  or  license 
from  said  patentee  or  his  assignees,  to  use  or  vend  the  same." 


JURISDICTION    OF    CONGRESS    AND    FEDERAL    COURTS.       451 

any  law  of  the  United  States,  granting  or  confirming  to  inven- 
tors the  exclusive  right  to  their  inventions  or  discoveries,  shall 
be  originally  cognizable,  as  well  in  equity  as  at  law,  by  the  Cir- 
cuit courts  of  the  United  States,  or  any  district  court  having 


Upon  this  Act,  Mr.  Justice  Story  said,  "Then  it  is  suggested,  that  the 
grant  of  the  patent  by  the  Act  of  Congress  of  1839,  ch.  14,  is  not  constitu- 
tional ;  for  it  operates  retrospectively  to  give  a  patent  for  an  invention, 
which,  though  made  by  the  patentee,  was  in  public  use  and  enjoyed  by  the 
community  at  the  time  of  the  passage  of  the  act.  But  this  objection  is 
fairly  put  at  rest  by  the  decision  of  the  supreme  court  in  the  case  of  the 
Patent  of  Oliver  Evans.  Evans  i'.  Eaton,  3  Wheat.  454.  For  myself  I 
never  have  entertained  any  doubt  of  the  constitutional  authority  of  Congress 
to  make  such  a  grant.  The  power  is  general  to  grant  to  inventors  ;  and  it 
rests  in  the  sound  discretion  of  Congress  to  say,  when  and  for  what  length 
of  time  and  under  what  circumstances  the  patent  for  an  invention  shall  be 
granted.  There  is  no  restriction  which  limits  the  power  of  Congress  to 
cases,  where  the  invention  has  not  been  known  or  used  by  the  public.  All 
that  is  required  is,  that  the  patentee  should  be  the  inventor.  The  only 
remaining  objection  is,  that  the  act  is  unconstitutional,  because  it  makes  the 
use  of  a  machine  constructed  and  used  before  the  lime  of  the  passage  of  the 
Act  of  1834,  ch.  213,  and  the  grant  of  the  patent  under  the  act  of  1839, 
ch.  14,  unlawful,  although  it  has  been  formerly  decided,  that  under  the  Act 
of  1834,  the  plaintiff  had  no  valid  patent;  and  so  the  defendant,  if  he  con- 
structed and  used  the  machine  during  that  period,  did  lawful  acts,  and  cannot 
now  be  retrospectively  made  a  wrong-doer.  If  this  were  the  true  result  of 
the  language  of  the  Act,  it  might  require  a  good  deal  of  consideration.  But 
I  do  not  understand,  that  the  act  gives  the  patentee  any  damages  for  the  con- 
struction or  use  of  the  machine,  except  after  the  grant  of  patent  under  the 
Act  of  1839,  ch.  14.  If  the  language  of  the  act  were  ambiguous  the  court 
would  give  it  this  construction,  so  that  it  might  not  be  deemed  to  create  rights 
retrospectively,  or  to  make  men  liable  for  damages  for  acts  lawful  at  the  time 
when  they  were  done.  The  Act  of  Congress  passed  in  general  terms  ought 
to  be  so  construed,  if  it  may,  as  to  be  deemed  a  just  exercise  of  constitutional 
authority  ;  and  not  only  so,  but  it  ought  to  be  construed,  not  to  operate  retro- 
spectively or  ex  post  facto,  unless  that  construction  is  unavoidable ;  for  even, 
if  a  retrospective  act  is  or  may  be  constitutional,  I  think  I  may  say,  that, 
according  to  the  theory  of  our  jurisprudence,  such  an  interpretation  is  never 
adopted  without  absolute  necessity ;  and  courts  of  justice  always  lean  to  a 
more  benign  construction.  But  in  the  present  case  there  is  no  claim  for 
any  damages  but  such  as  have  accrued  to  the  patentee  from  a  use  of  his 
machine  since  the  grant  of  the  patent  under  the  Act  of  1839,  ch.  14. 


452  LAW     OF     PATENTS. 

the  powers  and  jurisdiction  of  a  circuit  court,  which  courts 
shall  have  power,  upon  bill  in  equity  filed  by  any  party  aggrieved, 
in  any  such  case,  to  grant  injunctions,  according  to  the  course 
and  principles  of  courts  of  equity,  to  prevent  the  violation  of 
the  rights  of  any  inventor  as  secured  to  him  by  any  law  of  the 
United  States,  on  such  terms  and  conditions  as  said  courts  may 
deem  reasonable :  Provided,  however,  that,  from  all  judgments 
and  decrees,  from  any  such  court  rendered  in  the  premises,  a 
writ  of  error  or  appeal,  as  the  case  may  require,  shall  lie  to  the 
Supreme  Court  of  the  United  States,  in  the  same  manner  and 
under  the  same  circumstances  as  is  now  provided  by  law  in 
other  judgments  and  decrees  of  circuit  courts,  and  in  all  other 
cases  in  which  the  court  shall  deem  it  reasonable  to  allow  the 
same."  ^ 

<^  406.  The  jurisdiction  of  the  circuit  courts  of  the  United 
States  embraces,  therefore,  all  cases,  both  at  law  and  in  equity, 
arising  under  the  patent  laws,  without  regard  to  the  citizenship 
of  the  parties  or  the  amount  in  controversy ;  and  it  seems  to  be 
the  better  opinion,  that  this  jurisdiction  is  exclusive,  and  that 
the  state  courts  cannot  entertain  a  suit  for  the  infringement  of 
a  patent,  or  to  declare  a  patent  void.- 

-§>  407.  When  a  case  is  sent  to  the  Supreme  Court  of  the 
United  States,  under  the  discretion  conferred  upon  the  court 
below  by  the  seventeenth  section  of  the  Act  of  1836,  the  whole 
case  is  to  go  up.  The  word  "  reasonable "  in  the  statute 
applies  to  the  "  cases "  rather  than  to  the  points  of  the 
cases.^ 


'  See  also  the  Act,  Feb.  15,  1819,  c.  xix. 

*  3  Kent's  Com.  368  ;  Story's  Com.  on  the  Constitution.  The  course 
of  legislation  on  the  subject  of  patents  may  be  seen  in  the  Appendix  of  this 
work. 

'  Hogg  V.  Emerson,  6  Howard,  439,  478. 

The  court  there  said,  "It  may  be  very  proper  for  the  court  below  to 
examine  those  points  separately  and  with  care,  and  if  most  of  them  present 


JURISDICTION    OF    CONGRESS    AND    FEDERAL    COURTS.       453 

questions  of  common  law  only,  and  not  of  the  construction  of  the  patent 
acts,  and  others  present  questions  under  those  acts,  which  seem  very  clearly 
settled  or  trifling  in  their  character,  not  to  grant  the  writ  of  error  at  all  It 
might,  then,  well  be  regarded  as  not  '  reasonable  '  for  such  questions  in  a 
controversy  too  small  in  amount  to  make  the  writ  a  matter  of  right  to  per- 
sons, if  standing  on  an  equal  footing  with  other  suitors.  But,  we  think 
from  the  particular  words  used  rather  than  otherwise,  that  the  act  intended,' 
if  the  court  allowed  the  writ  as  '  reasonable '  at  all,  it  must  be  for  the' 
whole  case,  or,  in  other  words,  must  bring  up  the  whole  for  consideration." 


APPENDIX. 


A  P  P  E  ]N'  D  I  X . 


LAWS  OF  THE  UNITED  STATES  RELATING  TO  PATENTS 
AND  THE  PATENT  OFFICE. 


CONSTITUTION    OF    THE    UNITED    STATES. 

ARTICLE    1st,    SECTION    8lh. 

"The  Congress  shall  have  power,  &c.,  to  promote  the 
"  progress  of  science  and  useful  arts,  by  securing  for  lim- 
•'  ited  times  to  Authors  and  Inventers  the  exclusive  right 
"  to  their  respective  writings  and  discoveries."  Also, 
"  to  make  all  laws  which  shall  be  necessary  and  proper 
"  for  carrying  into  execution  the  foregoing  powers." 


CHAP.  VII.  —  An  Act  to  promote  the  progress  of  useful  arts. 

Section   1.  Be  it  enacted  hy  the  Senate  aud  House  of    Patents  for 

„  .  r     1      TT    ■      ■,    c^  /•    A  •        •      r\         useful  discov- 

Reipresentatxves  oj  the  Lmted  States  oj  America  in  Con-  eries,  how  ap- 

gress  assembled,  That  upon  the  petition  of  any  person  or  Pj-ai^je^""^'  "^"^ 

persons  to  the  Secretary  of  State,  the  Secretary  for  the  de-     Kepealed  hy 

.         the  act  of  21st 

partment  of  war,  and  the  Attorney  General  of  the  United  Feb'ry,  1793, 

States,  setting  forth,  that  he,  she,  or  they,  hath  or  have  in-  '^''^'j,g ' ggcre 

vented  or  discovered  any  useful  art,  manufacture,  engine,  tary  of  State, 

machine,  or  device,  or  any  improvement  therein  not  before  of*' WaT^anS 

known  or  used,  and  praying  that  a  patent  may  be  granted  'he    Atiomey 
•      ,      ,         ,  ^       ,        /i  1    r        1  .,  Gen'l,  or  any 

therefor,  it  shall  and  may  be  lawful  to  and  lor  the  said  two  of  them, 
Secretary  of  State,  the  Secretary  for  the  department  of  Jj^^JJl'^y^g  ^n'! 
war,  and  the  Attorney  General,  or  any  two  of  them,  if  vemion,  &c., 
they  shall  deem  the  invention  or  discovery  sufficiently  poriaut,  .10 
useful  and  important,  to  cause  letters  patent  to  be  made  ^'^"^^    letters 

'^  '  '^  patent    to   be 

out  in  the  name  of  the  United  States,  to  bear  teste  by  issued, 
the  President  of  the  United  States,  reciting  the  allega- 
tions and  suggestions  of  the  said  petition,  and  describing 
39 


458  LAWS    OF    THE    UNITED    STATES 

the  said  invention  or  discovery,  clearly,  truly,  and  fully, 
and  thereupon  granting  to  such  petitioner  or  petitioners, 
Continuance  j^jg^  \^qj  or  their   heirs,  administrators  or  assigns  for  any 
a  pa  en.     jgj.|^  j^^^.  exceeding  fourteen  years,  the  sole  and  exclu- 
sive  right   and   liberty  of   making,  constructing,  using, 
and  vending  to  others  to  be   used,  the  said   invention  or 
discovery  ;  which  letters-patent  shall  be  delivered  to  the 
Attorney  General  of  the   United  Slates  to  be  examined, 
who  shall,  within  fifteen  days  next  after  the  delivery  to 
him,  if  he   shall  find  the  same  conformable  to  this  act, 
Attor'y  Gen- certify  it  to  be  so  at  the  foot  thereof,  and  present  the 
T£  cmZ'vml  letters  patent  so  certified  to  the  President,  who  shall  cause 
ty  of  ihe  pa- the  seal  of  the  United  States  to  be  thereto  affixed,  and 
act.  the  same  shall  be   good  and  available  to  the  grantee  or 

grantees  by  force  of  this  act,  to  all  and  every  intent  and 
purpose  herein  contained,  and  shall  be  recorded  in  a  book 
to  be  kept  for  that  purpose  in  the  office  of  the  Secretary 
Patentstobeof  State,  and  delivered  to  the  patentee  or  his  agent,  and 
recorded.         ^j,g  delivery  thereof  shall   be  entered   on  the  record  and 
endorsed  on  the  patent  by  the  said  Secretary  at  the  time  of 
granting  the  same. 
Specification      Sec.  2.  And  be  if.  further  enacted,  That  the  grantee  or 
withaTlraf"frgi-antees  of  each   patent  shall,  at   the   time   of  granting 

model  thereof,  [\^q  game,  deliver  to  the  Secretary  of  Slate  a  specification 
to  liedeliver'd  .  .  .    .  ...  •     i       -.u 

and   filrd    in  m   writmg,  contauiing  a  description,  accompanied  with 

'he  s^reta°' •^'■^^'^  ^'^   models,  and  explanations  and   models,  (if  the 
of  State.         nature   of   the   invention   or    discovery   will    adniFt  of   a 
model)  of  the  thing  or  things,  by  him  or  them  invented 
or  discovered,  and   described   as   aforesaid,  in   the   said 
patents ;  which  specification  shall  be  so   particular,  and 
said  models  so  exact,  as  not  only  to  distinguish  the  inven- 
tion or  discovery  from  other  things  before  known  and 
used,  but  also  to  enable  a  workman  or  other  person  skilled 
in  the  art  or  manufacture,  whereof  it  is  a  branch,  or 
wherewith  it  may  be   nearest  connected,  to  make,  con- 
struct, or  use  the  same,  to  the  end  that  the   public   may 
have  the  full  benefit   thereof,  after  the  expiration  of  the 
patent  term  ;    which   specification   shall    be   filed  in   the 
Certified  CO- office  of  the  said  Secretary,  and  certified  copies  thereof, 
cases  to  be  ev- shall  be  competent  evidence  in  all  courts  and  before  all 
idence.  jurisdictions,  where  any  matter  or  thing,  touching  or  con- 

cerning such  patent,  right,  or  privilege,  shall  come  in 
question. 


RELATING  TO  PATENTS,  ETC.  459 

Sec.  3.  And  he  it  further  enacted,  That  upon  the  appli-  Copies  of  spe- 

cation  of  any  person  to  the  Secretary  of  State,  for  a  copy  '^'*i^'i"°"  ^^^ 

of  any  such  specification,  and  for  permission  to  have  simi-  lie  taken. 

lar  model  or  models  made,  it  shall  be  the  duty  of  the 

Secretary  to  give  such  copy,  and  to  permit  the  person  so 

applying  for  a  similar  model  or  models,  to  take,  or  make, 

or  cause  the  same  to  be  taken  or  made,  at  the  expense  of 

such  applicant. 

Sec.  4.  And  he  it  further  enacted.  That  if  any  person     Penalty  for 

.  makin"'    (fee. 

or   persons  shall   devise,   make,  construct,  use,  employ,  any  art.  6cc.', 

or  vend  within  these  United  States,  any  art,  manufacture,  ^lent '^"''has 
engine,  machine,  or  device,  or  any  invention  or  improve-  been  granted, 
ment  upon,  or  in  any  art,  manufacture,  engine,  machine, 
or  device,  the  sole  and  exclusive  right  of  which  shall  be 
so  as  aforesaid  granted  by  patent  to  any  person  or  per- 
sons, by  virtue  and  in  pursuance  of  this  act,  without  the 
consent  of  the  patentee  or  patentees,  their  executors,  ad- 
ministrators or  assigns,  first  had  and  obtained  in  writing, 
every  person  so  offending,  shall  forfeit  and  pay  to  the 

said  patentee  or  patentees,  his,  her,  or  their  executors, 

...  .  ,  Damages  to 

admmistrators  or  assigns,  such  damages  as  shall  be  as-  be     assessed 

sessed  by  a  jury,  and  moreover  shall  forfeit  to  the  person  ^^'  ^  J"""^' 
aggrieved   the  thing   or    things    so  devised,   made,   con- 
structed, used,  employed,  or  vended,  contrary  to  the  true 
intent  of  this  act,  which  may  be  recovered  in  an  action 
on  the  case  founded  on  this  act. 

Sec.  5.  And  be  it  further  enacted,  That  upon  oath  or 
affirmation  made  before  the  judge  of  the  district  court, 

where  the  defendant  resides,  that  any  patent  which  shall     „ 

•'    '  .  .       Patents  sur- 

be  issued  in  pursuance  of  this  act,  was  obtained  surrepti-  reptitiously 

tiously  by,  or  upon  false  suggestion,  and  motion  made  to  °  '^'°^  ' 
the   said   court,  within  one    year   after   issuing  the  said 
patent,  but  not  afterwards,  it  shall  and  may  be  lawful  to 
and  for  the  judge  of  the  said  district  court,   if  the   matter 
alleged  shall  appear  to  him  to  be  sufficient,  to  grant  a  rule 
that  the  patentee  or  patentees,  his,  her,  or  their  executors, 
administrators  or  assigns,  show  cause  why  process  should 
not  issue  against  him,  her,  or  them,  to   repeal  such   pa-     jjow  to  be 
tents ;  and  if  sufficient  cause  shall  not  be  shown  to  the  '"''ppal'^d. 
contrary,  the  rule  shall  be  made  absolute,  and  thereupon 
the   said  judge  shall  order  process  to  be  issued  as  afore- 
said, against  such  patentee  or  patentees,  his,  her,  or  their 
executors,  administrators,  or  assigns.     And  in  case  no 


460  LAWS    OF    THE    UNITED    STATES 

sufficient  cause  shall  be  shown  to  the  contrary,  or  if  it 
shall  appear  that  the  patentee  was  not  the  first  and  true 
inventor  or  discoverer,  judgment  shall  be  rendered  by 
such  court  for  the  repeal  of  such  patent  or  patents  ;  and 
if  the  party  at  whose  complaint  the  process  issued,  shall 
have  judgment  given  against  him,  he  shall  pay  all  such 
costs  as  the  defendant  shall  be  put  to  in  defending  the 
suit,  to  be  taxed  by  the  court,  and  recovered  in  such 
manner  as  costs  expended  by  defendants,  shall  be  recov- 
ered in  due  course  of  law. 
In    actions      Sec.  6.  And  he  it  further  enacted,  That  in  all  actions 

for      penalty,        ,      ,  ,     ,  ,  i  •       i 

patents  lo  be  to  be  brought  by  such  patentee  or  patentees,  his,  her,  or 
deemed  prima  ^hgij.  executors,  administrators  or  assigns,  for  any  penalty 

facie  evidence  _  _  _  .  . 

of  the  firsidis- incurred  by  virtue  of  this  act,  the  said  patents  or  specifi- 
spccml  matter  cations  shall  be  prima  facie  evidence,  that  the  said  pa- 
may  he  given  tentee  or  patentees  was  or  were  the  first  and  true  inventor 

in    evidence  ;  .  '  ^     i         i  • 

and  to  what  or  inventors,  discoverer  or  discoverers  ot  the  thing  so 
effect.  specified,  and  that  the  same  is  truly  specified  ;  but  that 

nevertheless  the  defendant  or  defendants  may  plead  the 
general  issue,  and  give  this  act,  and  any  special  matter 
whereof  notice  in  writing  shall  have  been  given  to  the 
plaintiff,  or  his  attorney,  thirty  days  before  the  trial,  in 
evidence,  tending  to  prove  that  the  specification  filed  by 
the  plaintiff  does  not  contain  the  whole  of  the  truth  con- 
cerning his  invention  or  discovery  ;  or  that  it  contains 
more  than  is  necessary  to  produce  the  effect  described  ; 
and  if  the  concealment  of  part,  or  the  addition  of  more 
than  is  necessary,  shall  appear  to  have  been  intended  to 
mislead,  or  shall  actually  mislead  the  public,  so  as  the 
effect  described  cannot  be  produced  by  the  means  speci- 
fied, then,  and  in  such  cases,  the  verdict  and  judgment 
shall  be  for  the  defendant. 
Patent  fees.  ggQ  7  ^^^^^  jg  (i  further  enacted,  That  such  patentee 
as  aforesaid,  shall,  before  he  receives  his  patent,  pay  the 
following  fees  to  the  several  officers  employed  in  nnaking 
out  and  perfecting  the  saiTie,  to  wit :  For  receiving  and 
filing  the  petition,  fifty  cents  ;  for  filing  specifications, 
per  copy-sheet  containing  one  hundred  words,  ten  cents; 
for  making  out  patent,  two  dollars;  for  affixing  great 
seal,  one  dollar  ;  for  indorsing  the  day  of  delivering  the 
same  to  the  patentee,  including  all  intermediate  services, 
twenty  cents. 

Approved  April  10,  1790. 


RELATING  TO  PATENTS,  ETC.  461 


CHAP.  IX.  —An  Act  to  promote  the  progress  of  useful  arts,  and  to 
repeal  tlie  act  heretofore  made  for  that  purpose. 

Section  1.  Be  it  enacted  ly  the  Senate  and  House  of    Act  of  1790, 
Representatives   of  the    United    States   of   America    in  *^^^''"  ^' 
Congress  assembled,  That  when  any  person  or  persons, 
being  a  citizen  or  citizens  of  the  United  States,  shall 
allege  that  he  or  they  have  invented  any  new  and  useful 
art,  machine,  manufacture  or  composition  of  matter,  or  tem*^  how  a^'d 
any  new  and  useful  improvement  on  any  art,  machine,  ''Y        whom 

c     .  •  •  n  1  ,  made  out. 

manufacture  or  composition  of  matter,  not  known  or  used    Act  of  April 

before  the  application,  and  shall  present  a  petition  to  the  i^'  '^^^',  ^^ 
o  /•CI  .      .„  .  '  '  33,  repealed. 

secretary  ot  btate,  signifying  a  desire  of  obtaining  an 
exclusive  property  in  the  same,  and  praying  that  a  patent 
may  be  granted  therefor,  it  shall  and  may  be  lawful  for 
the  said  Secretary  of  State,  to  cause  letters-patent  to 
be  made  out  in  the  name  of  the  United  States,  bear-  ij°  hrPrtsT- 
ing  teste  by  the  President  of  the  United  States,  recit-  '^e"«.  and 
ing  the  allegations  and  suggestions  of  the  said  petition, 
and  giving  a  short  description  of  the  said  invention  or 
discovery,  and  thereupon  granting  to  such  petitioner, 
or  petitioners,  his,  her,  or  their  heirs,  administrators  or 
assigns,  for  a  term  not  exceeding  fourteen  years,  the 
full  and  exclusive  right  and  liberty  of  making,  con- 
structing, using,  and  vending  to  others  to  be  used,  the 
said  invention  or  discovery,  which  letters-patent  shall 
be   delivered    to    the    Attorney-general   of    the    United  ^^   fsamiued 

o  •       1  1     "       •  ^'V  '"^  Atior- 

btates,  to   be   examined;   who,  within  fifteen  days  after  ney-general. 

such  delivery,  if  he  finds  the  same  conformable  to  this 
act,  shall  certify  accordingly,  at  the  foot  thereof,  and 
return  the  same  to  the  Secretary  of  State,  who  shall  pre- 
sent the  letters-patent  thus  certified,  to  be  signed,  and 
shall  cause  the  seal  of  the  United  States  to  be  thereto 
affixed  :  and  the  same  shall  be  good  and  available  to  the 
grantee  or  grantees,  by  force  of  this  act,  and  shall  be  ^^°°'  '^^^  ^^ 
recorded  in  a  book,  to  be  kept  for  that  purpose,  in  the 
office  of  the  Secretary  of  State,  and  delivered  to  the 
patentee  or  his  order. 

Sec  2.  Provided  always,  and  he  it  further  enacted.     The  liberty 
That  any  person,  who  shall  have  discovered  an  improve-  "mprovemenT 
ment  in  the  principle  of  any  machine,  or  in  the  process  defined, 
of  any  composition  of  matter,  which  have  been  patented, 
39* 


462  LAWS     OF    THE    UNITED     STATES 

and   shall  have  obtained  a  patent  for  such  improvement, 

he  shall  not  be  at  lil)erty  to  make,  use  or  vend  the  origi- 

(jj,3„„jn„,},g  nal  discovony,  nor  shall  the  first  inventor  be  at  liberty  to 

form  or  pro-  ,,se   the    improvement  :     And   it   is   hereby   enacted   and 

any  inacliine,  declared,  that  simply  changing  the   form  or  the  propor- 

^H'."°^ '"  *^^  tions  of  any  machine,  or  composition  of  matter,  in  any 

degree,  shall  not  be  deemed  a  discovery. 

How  to  pro-      ggc^  3_  j\^^(i  ^g  ii  further  enacted.  That  everv  inventor, 

ceed  to  obiain  .    '^ 

letters-paieiit.  before  he  can  receive  a  patent,  shall  swear  or  affirm,  that 

he  does  verily  believe,  that  he  is  the  true  inventor  or  dis- 

.r^^    k  c^  coven^r  of  the   art,  machine,  or  imDrovement,  for  which 
1800,  en.  25,  _  .  . 

sec.  2.  he   solicits   a   patent,   which   oath   or  affirmation  maybe 

made  before  any  person  authorized  to  administer  oaths, 
and   shall  deliver  a   written  description  of  his  invention, 

Specification.^"^  of  the  manner  of  using,  or  process  of  compounding 
the  same,  in  such  full,  clear,  and  exact  terms,  as  to  dis- 
tinguish the  same  from  all  other  things  before  known,  and 
to  enable  any  person  skilled  in  the  art  or  science,  of 
which  it  is  a  branch,  or  with  which  it  is  most  nearly  con- 
nected, to  make,  compound,  and  use  the  same.  And  in 
the  case  of  any  machine,  he  shall  fully  explain  the  prin- 
ciple, and  the  several  modes  in  which  he  has  contem- 
plated the  application  of  that  principle   or  character,  by 

Specification.  ^ ,  .   ,     .         '  '  ...         .  ,      ,    ^  ,  .  • 

which  It  may   be   distinguished   from    other    inventions ; 

and  he  shall  accompany  the  whole  with  drawings  and 
written  references,  where  the  nature  of  the  case  admits 
of  drawings,  or  with  specimens  of  the  ingredients,  and  of 
the  composition  of  matter,  sufficient  in  quantity  for  the 
purpose  of  experiment,  where  the  invention  is  of  a  com- 
position of  matter  ;  which  description,  signed  by  himself 
and  attested  by  two  witnesses,  shall  be  filed  in  the  office 
of  the  Secretary  of  State,  and  certified  copies  thereof 
shall  be  competent  evidence  in  all  courts,  where  any 
matter  or  thing,  touching  such  patent  right,  shall  come  in 
question.  And  such  inventor  shall,  moreover,  deliver  a 
model  of  his  machine,  provided,  the  Secretary  shall  deem 
such  model  to  be  necessary. 
Inventors         ggc,  4.  And  he  it  further  enacted.  That  it  shall  be 

may      assign  ,       „  ,    „  .  ,  .  ,     •    • 

their  titles,      lawful  for  any  inventor,  his  executor  or  administrator,  to 

Record    of  ggsinrn  the  title   and  interest  in  the  said  invention,  at  any 
assignment  to   .      °  .  .  .     •' 

be   made    in  time,  and  the  assignee  having  recorded  the  said  assign- 

Ihe  sSmry  ^^"t  in  the  office  of  the   Secretary  of  State,  shall  there- 
of State,         after  stand  in  the  place  of  the  original  inventor,  both  as  to 


RELATING  TO  PATENTS,  ETC.  463 

right  and  responsibility,  and  so  the  assignee  of  assigns,  to 

any  degree. 

Sec.  5.  And  he  it  further  enacted.  That  if  any  person  Forfeiture  on 

shall  make,  devise,  and  use,  or  sell  the  thing  so  invented,  "(^'"^^,^,^^j^Jj,'■ 

the  exclusive  right  of  which. shall,  as  aforesaid,  have  been  wiihoui leave. 

secured  to  any  person  by  patent,  without  the    consent  of 

the   patentee,   his  executors,  administrators,    or   assigns, 

first  obtained  in  writing,  every  person  so  offending,  shall 

forfeit  and  pay   to  the  patentee  a  sum,  that  shall  be  at 

least    equal    to    three    times    the    price,    for   which    the    Three  times 
1  11  11  1-1  .  the  price  to  be 

patentee   has   usually  sold  or  licensed  to  other  persons,  the  penalty. 

the  use  of  the  said  invention  ;  which  may  be  recovered 

,,  r         1     ^  1  •  ■        1         •         How  recov- 

in  an  action  on  the  case  lounded  on  this  act,  in  the  cir-cred. 

cuit  court  of  the  United  States,  or  any  other  court  having 

competent  jurisdiction. 

Sec.  6.  Provided  ahcays,  and   he  it  further  enacted..  Howdefend- 

.  .  "^  .  ants  may  give 

That  the  defendant  in  such  action  shall  be  permitted  to  ihis  act  m  ev- 

plead  the  general  issue,  and  give  this  act  and  any  special '  ^"'^°' 

matter,  of  which  notice  in  writing  may   have   been  given 

to  the  plaintiff,  or  his  attorney,  thirty  days  before  trial,  in 

evidence,  tending  to  prove   that  the  specification,    filed 

by  the  plaintiff,  does  not  contain  the  whole  truth   relative 

to  his  discovery,  or  that  it  contains  more  than  is  necessary 

to   produce   the   described  effect,  which  concealment  or 

addition   shall  fully  appear  to  have  been  made,  for  the 

purpose  of  deceiving  the  public,  or   that   the   thing,  thus 

secured  by  patent,  was  not  originally  discovered  by  the 

patentee,  but  had  been  in  use,  or  had  been  described  in 

some  public  work  anterior  to  the   supposed  discovery   of 

the  patentee,  or  that  he   had   surreptitiously   obtained  a 

patent  for  the  discovery  of  another  person  :  in  either  of    And   judg- 

which  cases,  iudgment  shall  be  rendered  for  the  defend-  '^^^^  ^^^"  ^* 
'JO  given. 

ant,  with  costs,  and  the  patent  shall  be  declared  void. 

Sec.  7.  And   be  it   further  enacted.  That  where    any     State  rights 

.  />  /■  ^°  invenlions, 

State,  before  its  adoption  of  the  present  form  of  govern-  when  to  he 
ment,  shall  have  granted  an  exclusive  right  to  any  inven-*^*^^"  '" 
tion,  the  party,  claiming  that  right,  shall  not  be  capable 
of  obtaining  an  exclusive  right  under  this  act,  but  on 
relinquishing  his  right  under  such  particular  State,  and  of 
such  relinquishment,  his  obtaining  an  exclusive  right 
under  this  act  shall  be  sufficient  evidence. 

Sec  8.  And  he  it  further  enacted,  That  the  persons,  Howapplica- 

,  1-      i-  /•  1         •  /■  tioas  depend- 

whose  applications  tor  patents,  were,  at  the  time  of  pass-  ny.,  under  ibr- 


464  LAWS     OF     THE    UNITED    STATES 

mer  law  shall  ing  this  act,  depending  before  the  Secretary  of  State, 
uude'rXs^aci'  Secretary  at  War,  and  Attorney-genera!,  according  to 
the  act,  passed  the  second  session  of  the  first  Congress, 
1790,  ch.  7.  intituled  "An  act  to  promote  the  progress  of  useful 
arts,"  on  complying  with  tiie  conditions  of  this  act,  and 
paying  the  fees  herein  required,  may  pursue  their  respec- 
tive claims  to  a  patent  under  tlie  same. 

Proceedings      Sec.  9.  And  be  it  further  enacted,  That  in  case  of  in- 
to be  had  on  .  ,       ,       ^ 
interfering  ap-terfering  applications,  the  same  shall  be  submitted  to  the 

p  ica  ions.       arbitration  of  three  persons,  one  of  whom  shall  be  chosen 

by  each  of  the  applicants,  and   the  third   person  shall  be 

appointed  by  the  Secretary  of  State  ;  and  the  decision  or 

award  of  such  arbitrators,  delivered  to   the  Secretary  of 

State  in  writing,  and  subscribed   by  them,  or  any  two  of 

them  shall  be  final,  as  far  as  respects  the  granting  of  the 

patent :  And  if  either  of  the  applicants  shall  refuse  or 

fail  to  chuse  an  arbitrator,  the   patent  shall  issue  to  the 

opposite  party.     And  where  there  shall  be  more  than  two 

interfering   applications,  and   the   parties  applying  shall 

not  all  unite  in  appointing  three  arbitrators,  it  shall  be 

in  the  power  of  the  Secretary  of  State  to  appoint  three 

arbitrators  for  the  purpose. 

And  against      Sec.   10.  And  be  it  furthe)' enacted.  That  upon  oath  or 

persons     sur-     „  ...  ,      ,     n  i-i  /•iv- 

repiitidusiy     athrmation  bemg  made  before  the  judge  ot  the  district 
olnaining  pat- ^Qyj,j^  ^y|^gj,g  ^j-^g  patentee,  his  executors,  administrators, 

or  assigns  reside,  that  any  patent,  which  shall  be  issued 
in  pursuance  of  this  act,  was  obtained  surreptitiously, 
or  upon  false  suggestion,  and  motion  made  to  the  said 
court,  within  three  years  after  issuing  the  said  patent, 
but  not  afterwards,  it  shall  and  may  be  lawful  for  the 
judge  of  the  said  district  court,  if  the  matter  alleged 
shall  appear  to  him  to  be  sufficient,  to  grant  a  rule,  that 
the  patentee,  or  his  executor,  administrator,  or  assign 
show  cause  why  process  should  not  issue  against  him  to 
repeal  such  patent.  And  if  sufficient  cause  shall  not  be 
shown  to  the  contrary,  the  rule  shall  be  made  absolute, 
and  thereupon  the  said  judge  shall  order  process  to  be 
issued  against  such  patentee,  or  his  executors,  adminis- 
ters, or  assigns,  wiih  costs  of  suit.  And  in  case  no  suf- 
ficient cause  shall  be  shown  to  the  contrary,  or  if  it  shall 
appear  that  the  patentee  was  not  the  true  inventor  or 
Repeal  of  a  discoverer,  judgment  shall  be  rendered  by  such  court  for 
fy  obtained.^*  the  repeal  of  such  patent;  and  if  the  party,  at  whose 


RELATING  TO  PATENTS,  ETC.  465 

complaint  the  process  issued,  shall  have  judgment  given 
against  him,  he  shall  pay  all  such  costs  as  the  defendant 
shall  be  put  to  in  defending  the  suit,  to  be  taxed  by  the 
court,  and  recovered  in  due  course  of  law. 

Sec.  11.  And  be  it  further  enacted,  That  every  inven-    Inventor, he- 
tor,  before   he  presents  his  invention  to  the  Secretary  of  j°^^    peffuon" 

State,  signifying  his  desire  of  obtaining  a  patent,  shall  pay  '»  pay  ^30  in- 
,  ,•  1    ,,  r  .-V    ,         ,     ,,     ^/  to  ihe  treasu- 

mto  the  treasury  thirty  dollars,  for  which  he  shall  take  ry. 
duplicate  receipts  ;  one  of  which  receipts  he  shall  deliver 
to  the  Secretary  of  State,  when  he  presents  his  petition  ; 
and  the  money,  thus  paid,  shall  be  in  full  for  the  sundry 
services  to  be  performed  in  the  office  of  the  Secretary  of 
State,  consequent  on  such  petition,  and  shall  pass  to  the 
account  of  clerk-hire  in  that  office.  Provided,  neverthe- 
less. That  for  every  copy,  which  may  be  required  at  the  Copying  fees, 
said  office,  of  any  paper  respecting  any  patent  that  has 
been  granted,  the  person,  obtaining  such  copy,  shall  pay, 
at  the  rate  of  twenty  cents,  for  every  copy-sheet  of  one 
hundred  words,  and  for  every  copy  of  a  drawing,  the 
party  obtaining  the  same,  shall  pay  two  dollars  ;  of  which 
payments,  an  account  shall  be  rendered,  annually  to  the 
treasury  of  the  United  States,  and  they  shall  also  pass  to 
the  account  of  clerk-hire  in  the  office  of  the  Secretary  of 
State. 

Sec  12.  And  be  it  further  enacted,  Thai  the  act,  passed   Act  of  April 
1  ,    1         ^  A     ■  I     •      .  1  1  '0.  •''go,  ch. 

the  tenth  day  oi  April,   in  the  year  one  thousana  seven  7,  repealed. 

hundred  and  ninety,  intitled  "  An  Act  to  promote  the 
progress  of  useful  arts,"  be,  and  the  same  is  hereby  re- 
pealed. Provided  ahvays.  That  nothing,  contained  in  this  Proviso, 
act,  shall  be  construed  to  invalidate  any  patent  that  may 
have  been  granted  under  the  authority  of  the  said  act ; 
and  all  patentees  under  the  said  act,  their  executors,  ad- 
ministrators, and  assigns,  shall  be  considered  within  the 
purview  of  this  act,  in  respect  to  the  violation  of  their 
rights  ;  provided,  such  violations  shall  be  committed  after 
the  passing  of  this  act. 

Approved  February  21,  1793. 


CHAP.  LVIII.  —  An  Act  supplementary  to  the  act,  intituled  "  An  Act  ' 

to  promote  the  progress  of  useful  arts."  (Obsolete.) 

Be  it  enacted  by  the  Senate  and  House  of  Representa-  ^"''s,  &Cf 
lives  of  the   United  States  of  Aynerica  in  Congress  assem- 


466  LAWS    OF    THE    UNITED    STATES 

tain    act    re-  Hed,  That   all   suits,  actions,   process  and    proceedings, 

heretofore  had  in  any  district  court  of  the  United   States, 

under  an  act  passed  the  tenth  day  of  April,  in  the  year 

ActofFeh.  one  thousand  seven  hundred  and  ninety,  intituled  "An 

21      1793     ch. 

11.'  '  Act  to  promote  the  progress  of  useful  arts,"  which 
10^*1^90  ''h  ^^y  have  been  set  aside,  suspended  or  abated,  by  reason 
7.  of  the  repeal  of  the  said  act,  may  be  restored,  at  the  in- 

stance of  the  plaintiff  or  defendant,  within  one  year  from 
and  after  the  passing  of  this  act,  in  the  said  courts,  to 
the  same  situation,  in  which  they  may  have  been,  when 
they  were  so  set  aside,  suspended,  or  abated  ;  and  that  the 
parties  to  the  said  suits,  actions,  process  or  proceedings, 
be,  and  are  hereby  intitled  to  proceed  in  such  cases,  as 
if  no  such  repeal  of  the  act  aforesaid  had  taken  place. 
^^nw  a  ^^^-  pj-Q(;i(i£fi  always,  That  before  any  order  or  proceeding, 
other  than  that  for  continuing  the  same  suits,  after  the 
reinstating  thereof,  shall  be  entered  or  had,  the  defend- 
ant or  plaintiff,  as  the  case  may  be,  against  whom  the 
same  may  have  been  reinstated,  shall  be  brought  into 
court  by  summons,  attachment,  or  such  other  proceed- 
ing, as  is  used  in  other  cases  for  compelling  the  appear- 
ance of  a  party. 

Approved  June  7,  1794. 


CHAP.  XXV.  —  An  Act  to  extend  the  privilege  of  olitaining  patents 
for  useful  discoveries  and  inventions,  to  certain  persons  ihereni  meii- 
(Repealed.)        tioned,  and  to  enlarge  and  define  the  penalties  for  viol*iting  the  rights 
of  patentees. 

in-'resfdecr2      ^ECTioN  1.  Be  it  enacted  ly  the  Senate  and  House  of 

years    within  Represeutatiius  of  the  United  Slates  of  America  in  Con- 

entitled  to  the  ^^^^^  ossemhfed,   That  all   and  singular   the  rights    and 

benefit  of  the  privileges  given,  intended  or   provided  to  citizens  of  the 
former  act.  .       °        °  ,  ' 

Act  of  Feb.  United  States,  respecting  patents  for  new  inventions,  dis- 

^^'         '  *^  '  coveries  and  improvements,  by  the  act,  intituled  "  An  Act 

to  promote  the  progress  of  useful  arts,  and  to  repeal  the 

act  heretofore  made  for  that  purpose,"  shall  be,  and  hereby 

are  extended  and  given  to  all  aliens,  who  at  the  time  of 

petitioning   in    the    manner    prescribed    by  the  said  act, 

shall  have  resided  for  two  years  vviihin  the  United  States, 

which  privileges  shall  be  obtained,  used,  and  enjoyed, 


RELATING  TO  PATENTS,  ETC.  467 

by  such  persons,  in  as  full  and  ample  manner,  and  under 
the   same  conditions,   limitations  and   restrictions,  as  by 
the  said   act  is  provided,  and  directed  in  the  case  of  citi- 
zens of  the  United  States,     Provided  always,  That  every     Oath  to  be 
person  petitioning  for  a  patent  for  any  invention,  art  or  ^d,l^^  "S 
discovery,  pursuant  to  this  act,  shall  make  oath  or  affirma-  ''"^  invention 
tion   before   some   person  duly  authorized  to  administer  haih  no^been 
oaths  before  such  patent  shall  be  granted,  that  such  in-"^^'*' 
vention,  art  or  discovery  hath  not,  to  the   best  of  his  or 
her  knowledge  or  belief,  been   known  or  used  either  in 
this  or  any  foreign  country,  and  that  every  patent  which 
shall  be  obtained   pursuant  to  this  act,  for  any  invention, 
art  or  discovery  which  it  shall  afterwards  appear  had  been 
known  or  used   previous  to  such   application  for  a  patent 
shall  be  utterly  void. 

Sec,  2.  And  he  it  further  enacted,  That  where  any  The  legal  re- 
person  hath  made,  or  shall  have  made,  any  new  inven- 'JiTdeclased 
tion,  discovery  or  improvement  on  account  of  which  a  i"veiitor  may 

..•1,1  •  i>      ,  ■  ,  ,  oliiain    a    pa- 

patent  might,  by  virtue  of   this  or  the  above-mentioned  leni. 

act,  be  granted  to  such  person,  and  shall  die  before  any 
patent  shall  be  granted  therefor,  the  right  of  applying 
for  and  obtaining  such  patent,  shall  devolve  on  the  legal 
representatives  of  such  person  in  trust  for  the  heirs  at 
law  of  the  deceased,  in  case  he  shall  have  died  intestate  ; 
but  if  otherwise,  then  in  trust  for  his  devisees,  in  as  full 
and  ample  manner,  and  under  the  same  conditions,  limi- 
tations and  restrictions,  as  the  same  was  held  or  mifrht 
have  been  claimed  or  enjoyed  by  such  person,  in  his  or 
her  lifetime  ;  and  when  application  for  a  patent  shall  be 
made  by  such  legal  representatives,  the  oath  or  affirma- 
tion, provided  in  the  third  section  of  the  before-men- 
tioned act,  shall  be  so  varied  as  to  be  applicable  to 
them. 

Sec  3.  And  he  it  farther  enacted,  That  where  any  Damages  for 
patent  shall  be  or  shall  have  been  granted  pursuant  to  eurright.  ^" 
this  or  the  above-mentioned  act,  and  any  person  without 
the  consent  of  the  patentee,  his  or  her  executors,  admin- 
istrators or  assigns  first  obtained  in  writing,  shall  make, 
devise,  use,  or  sell  the  thing  whereof  the  exclusive  right 
is  secured  to  the  said  patentee  by  such  patent,  such  per- 
son so  offending,  shall  forfeit  and  pay  to  the  said  paten- 
tee, his  executors,  administrators  or  assigns,  a  sum  equal 
to  three  times  the  actual  damage  sustained  by  such  paten- 


468  LAWS     OF    THE    UNITED    STATES 

tee,  his  executors,  administrators  or  assigns,  from  or  by 

To  be  recov-  reason  of  such  offence,  which  sum  shall  and  may  be  re- 
ered  liy  action  .  /-         ,     ,  ,  •  i    .1 

on  the  case  111  covered,  by  action  on  the  case  founded  on  tins  and  tlie 

the       circuit  above-mentioned  act,  in  the  circuit  court  of  the  United 

court.  _        _      _      /  _ 

States,  having  jurisdiction  thereof. 

Repeal     of     Sec.  4.  And  be  it  further  enacted,  That  the  fifth  sec- 

ibrmer°Lt/''^  tion  of  the  above-mentioned   act,  intituled    "  An  Act  to 

Act  of  Feb.  promote  the  progress  of  useful  arts,  and  to  repeal  the  act 

11'.        '        heretofore  made  for  that  purpose,"  shall  be  and  hereby  is 

repealed. 

Approved  April  17,  1800. 


CHAP.  XIX.  —  An  Act  to  extend  the  jurisdiction  of  the  circuit  courts 
of  the  United  Stales  to  cases  arising  under  the  law  relating  to  patents. 

The  circuit      j5e  it  enacted  by  the  Senate  and  House  of  Represent' 

courts  to  have       .  />     7        xr   •      7    r.  /•     /i  •         •       /-i 

original cogni- oiit'es  oj  the  United  states  oj  Avierica  m  tongress 
sance  in  equi-    ^       j^g  7    That  the  circuit  courts  of  the  United   States 

ty  and  at  law,  '  _    _ 

in  conirover-  shall  have  original  cognisance,  as  well  in  equity  as  at 
in°-  the*n4it'^Wi  ^f  all  actions,  suits,  controversies,  and  cases,  arising 
to  inventions  under  any  law  of  the  United  States,  granting  or  confirm- 

and   writings.  .  •'  .  .  . 

Act  of  Fell,  ing  to  authors  or  inventors,  the  exclusive  right  to  their 
jj'_         '   *^ '■  respective    writings,    inventions,   and    discoveries:    and 
Act  of  May  upon  any  bill   in   equity,  filed   by  any  party  aggrieved  in 
15!  '      '  any  such  cases,  shall  have  authority  to  grant  injunctions, 

according  to  the  course  and  principles  of  courts  of  equi- 
ty, to  prevent  the  violation  of  the  rights  of  any  authors 
or  inventors,  secured  to  them  by  any  laws  of  the  United 
States,  on  such  terms  and  conditions  as  the  said  courts 
Proviso,  may  deem  fit  and  reasonable  :  Provided,  however,  That 
from  all  judgments  and  decrees  of  any  circuit  courts, 
rendered  in  the  premises,  a  writ  of  error  or  appeal,  as 
the  case  may  require,  shall  lie  to  the  Supreme  Court  of 
the  United  States,  in  the  same  manner,  and  under  the 
same  circumstances,  as  is  now  provided  by  law  in  other 
judgments  and  decrees  of  such  circuit  courts. 
Approved  February  15,  1819. 


RELATING  TO  PATENTS,  ETC.  469 


CHAP.  CLXII.— An  Act  concerning  patents  for  useful  inventions. 

Be  it  enacted  by  the  Senate  and  House  of  Representa-     Act  of  July 
lives  of  the  United  States  of  America  in  Congress  assem-%T^^^'  ^  ^^' 
bled,  That  it  shall  be  the  duty  of  the  Secretary  of  State, 
annually,  in  the  month  of  January,  to  report  to  Congress, 
and  to  publish  in  two  of  the  newspapers  printed  in  the  city 
of  Washington,  a  list  of  all  the  patents  for  discoveries,  in-    .List  of  ex- 
\entions   and    improvements,  which  shall    have    expired  lo'^be  a^nniiar 
within  the  year  immediately  precedincr,  with  the  names  of  1^'  '"'^P°'''ed  to 

,    ,     ,      .  °  Congress, 

the  patentees,,  alphabetically  arranged. 

Sec.  2.  A7id  be  it  further  enacted,  That  application  to  Form  of  ap- 
n  ..1  1  r  ,     ,,  plication      to 

Congress  to  prolong  or  renew  the  term  of  a  patent,  shall  prolong  or  re- 
be  made  before  its  expiration,  and  shall  be  notified  at  least '"^^^  P"*^"^"'- 
once  a  month,  for  three  months  before  its  presentation, 
in  two  newspapers  printed  in  the  city  of  Washington, 
and  in  one  of  the  newspapers  in  which  the  laws  of  the 
United  States  shall  be  published  in  the  State  or  territory 
in  which  the  patentee  shall  reside.  The  petition  shall  set 
forth  particularly  the  grounds  of  the  application.  It  shall 
be  verified  by  oath;  the  evidence  in  its  support  may  be 
taken  before  any  judge  or  justice  of  the  peade  ;  it  shall  be 
accompanied  by  a  statement  of  the  ascertained  value  of 
the  discovery,  invention,  or  improvement,  and  of  the 
receipts  and  expenditures  of  the  patentee,  so  as  to  exhibit 
the  profit  or  loss  arising  therefrom. 

Sec  3.  And  be  it  further  enacted,  That  wherever  any  Patent  to  be 
patent  which  has  been  heretofore,  or  shall  be  hereafter,  of  inventor  no^ 
granted  to  any  inventor  in  pursuance  of  the  act  of  Con-  ^'j*^'"? .  poni- 

°  •  1     1         A  ■  P''*^''  With  the 

gress,  entitled  "  An  act  to  promote  the  progress  of  useful  terms,  &c. 
arts,  and  to  repeal  the  act  heretofore  made  for  that  pur-    ^^^3, ch.  ii. 
pose,"  passed  on  the  twenty-first  day  of  February,  in  the 
year  of  our  Lord,  one  thousand  seven  hundred  and  ninety- 
three,  or  of  any  of  the  acts  supplementary  thereto,  shall  be 
invalid  or  inoperative,  by  reason  that  any  of  the  terms  or 
conditions  prescribed  in  the  third  section  of  the  said  first 
mentioned  act,  have   not,  by  inadvertence,  accident,  or 
mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, been  complied  with  on  the  part  of  the  said  inventor,     Secretary  ot 
it  shall  be  lawful  for  the  Secretary  of  State,  upon  the  sur-  Surrender" &". 
render  to  him  of  such  patent,  to  cause  a  new  patent  to  be  ^°  grant  a  new 
granted  to  the  said  inventor  for  the  same  invention  for  the 
40 


470  LAWS    OF    THE    UNITED    STATES 

residue    of  the    period   then   unexpired,    for   which   the 

original  patent  was  granted,  upon  his  compliance  with  the 

terms  and  conditions  prescribed  in  the  said  third  section  of 

In  case  of  the  said  act.     And,  in  case  of  his  death,  or  any  assignment 

h'^bt  'to  vest'  by  him  made  of  the  same  patent,  the  like  right  shall  vest 

in    executors,  j^   his    executors  and  administrators,  or  assignee  or  as- 
&c.  . 

Proviso.      signees :  Provided,  hoivever,   That  such  new  patent,  so 

granted,  shall,  in  all  respects,  be  liable  to  the  same  matters 

of  objection  and  defence,  as  any  original  patent  granted 

under  the  said  first  mentioned  act.     But  no  public  use  or  ' 

privilege  of  the  invention  so  patented,  derived  from  or  after 

the  grant  of  the  original  patent,  either  under  any  special 

license  of  the   inventor,   or   without   the  consent  of  the 

patentee  that  there 'shall  be  a  free  public  use  thereof,  shall, 

in  any  manner,  prejudice  his  right  of  recovery  for  any  use 

or  violation  of  his  invention  after  the  grant  of  such  new 

patent  as  aforesaid. 

Approved  July  3,  1832. 


CHAP.  CCIII.  —  An  Act  concerning  the  issuing  of  patents  to  aliens, 
for  useful  discoveries  and  inventions. 

Be  it  enacted  hy  the  Senate  and  House  of  Representa- 
The    privi-  fives  of  the  United  States  of  America  in  Congress  assem- 
io°^alifns"ex-  i'^^d,  That  the  privileges  granted  to  the  aliens  described 
tended.  [^  i\^q  flj-gt  section  of  the  act,  to  extencjl  the  privilege  of 

obtaining  patents  for  useful  discoveries  and  inventions  to 
certain  persons  therein  mentioned,  and  to  enlarge  and 
define  'the  penalties  for  violating  the  rights  of  patentees, 
Actof  April  approved  April  seventeenth,  eighteen  hundred,  be  extend- 
2-'  '  ^  ■  ed,  in  like  manner,  to  every  alien,  who,  at  the  time  of 
petitioning  for  a  patent,  shall  be  resident  in  the  United 
States,  and  shall  have  declared  his  intention,  according  to 
Proviso.  law,  to  become  a  citizen  thereof:  Provided,  That  every 
patent  granted  by  virtue  of  this  act,  and  the  privileges 
thereto  appertaining,  shall  cease  and  determine  and  be- 
come absolutely  void  without  resort  to  any  legal  process 
to  annul  or  cancel  the  same  in  case  of  a  failure  on  the 
part  of  any  patentee,  for  the  space  of  one  year  from  the 
issuing  thereof,  to  introduce  into  public  use  in  the  United 
States  the  invention  or  improvement  for  which  the  patent 
shall  be  issued ;  or  in  case  the  same  for  any  period  of  six 


RELATING  TO  PATENTS,  ETC.  471 

months  after  such  introduction  shall  not  continue  to  be 
publicly  used  and  applied  in  the  United  States,  or  in  case 
of  failure  to  become  a  citizen  of  the  United  States, 
agreeably  to  notice  given  at  the  earliest  period  within 
which  he  shall  be  entitled  to  become  a  citizen  of  the  United 
States. 

Approved  July  13,  1832. 


CHAP.  CCCLVII.  —  An  Act  to  promote  tlie  projjress  of  tke  useful 
arts,  and  to  repeal  all  acts  and  parts  of  acts  heretofore  made  for  that 
purpose. 

Be  it  enacted  by  the  Senate  and  House  of  Representa-  ^'arch  3,1337, 
tives  of  the  United  States  of  America  in  Congress  assem- 
bled, That  there  shall  be  established  and  attached  to  the 
Department    of  State   an    office    to  be  denominated    the 
Patent  Office,  the  chief  officer  of  which  shall   be  called 

the    Commissioner  of   Patents,  to   be    appointed   by   the  Commission- 
r>       •  1  1  1-11  1    •  /  %.    1      sr  of  Patents 

President,  by  and  with  the   advice   and    consent   of  the  to  be  appoim- 

Senate,  whose   duty  it  shall  be,  under   the  direction  of  ^'''^^"'^'"^'^"" 
the  Secretaiy  of  State,  to  superintend,  execute,  and  per-     August  29, 
form  all  such  acts   and   things  touching  and  respecting        '. 
the  granting  and  issuing  of  patents  for  new  and   useful 
discoveries,  inventions,  and   improvements,  as  are  herein 
provided  for,  or  shall  hereafter  be,  by  law,  directed   to 
be  done  and  performed,  and  shall  have  the  charge  and  cus- 
tody of  all  the  books,  records,  papers,  models,  machines, 
and  all  other  things  belonging   to  said   office.     And   said 
Commissioner  shall  receive  tiie  same  compensation  as  is 
allowed  by  law  to  the  Commissioner  of  the  Indian  Depart- 
ment, and  shall  be  entitled  to  send  and  receive  letters  and 
packages  by  mail,  relating  to  the  business  of  the  office, 
free  of  postage. 

Sec  2.  And  be  it  further  enacted,  That  there  shall  be  Chief  clerk. 
in  said  office  an  inferior  officef,  to  be  appointed  by  the 
said  principal  officer,  with  the  approval  of  the  Secretary 
of  State,  to  receive  an  annual  salary  of  seventeen  hun- 
dred dollars,  and  to  be  called  the  chief  clerk  of  the 
Patent  Office,  who,  in  all  cases  during  the  necessary 
absence  of  the  Commissioner,  or  when  the  said  principal 
office  shall  become  vacant,  shall  have  the  charge  and  cus- 
tody  of  the  seal,   and  of  the   records,   books,   papers, 


472  LAWS    OF    THE    UNITED    STATES 

machines,  models,  and  all  other  things,  belonging  to  the 
said  office,  and  shall  perform  the  duties  of  Commissioner 
Examining  during  such  vacancy.  And  the  said  Commissioner  may 
officers  °'  ^"^  also,  with  like  approval,  appoint  an  examining  clerk,  at 
an  annual  salary  of  fifteen  hundred  dollars ;  two  other 
clerks,  at  twelve  hundred  dollars  each,  one  of  whom 
shall  be  a  competent  draughtsman  ;  one  other  clerk,  at 
one  thousand  dollars ;  a  machinist,  at  twelve  hundred 
and  fifty  dollars ;  and  a  messenger,  at  seven  hundred  dol- 
lars. And  said  Commissioner,  clerks,  and  every  other 
person  appointed  and  employed  in  said  office,  shall  be 
disqualified  and  interdicted  from  acquiring  or  taking, 
except  by  inheritance,  during  the  period  for  which  they 
shall  hold  their  appointments,  respectively,  any  right  or 
interest,  directly  or  indirectly,  in  any  patent  for  an  inven- 
tion or  discovery  which  has  been,  or  may  hereafter  be, 
granted. 

Officers  to       g^^   3^  ji^^  jg  ^f  further  enacted.  That  the  said  prin- 
make  oath       .  -^  ... 

(Sec.         cipal  officer,  and   every  other  person  to  be  appointed  m 

the  said  office,  shall,  before  he  enters  upon  the  duties  of 
his  office  or  appointment,  make  oath  or  affirmation  truly 
and  faithfully  to  execute  the  trust  committed  to  him. 
And  the  said  Commissioner  and  the  chief  clerk  shall  also, 
before  entering  upon  their  duties,  severally  give  bonds, 
with  sureties,  to  the  Treasurer  of  the  United  States,  the 
former  in  the  sum  of  ten  thousand  dollars  and  the  lat- 
ter in  the  sum  of  five  thousand  dollars,  with  condition 
to  render  a  true  and  faithful  account  to  him  or  his  suc- 
cessor in  office,  quarterly,  of  all  moneys  which  shall  be 
by  them  respectively  received  for  duties  on  patents,  and 
for  copies  of  records  and  drawings,  and  all  other  moneys 
received  by  virtue  of  said  office. 
A  seal  to  be  Sec.  4.  And  he  it  further  enacted,  That  the  said  Com- 
pfovi  e  .  missioner  shall  cause  a  seal  to  be  made  and  provided  for 
the  said  office,  with  such  device  as  the  President  of  the 
United  States  shall  approve  ;  and  copies  of  any  records, 
books,  papers,  or  drawings,  belonging  to  the  said  office, 
under  the  signature  of  the  said  Commissioner,  or,  when 
the  office  shall  be  vacant,  under  the  signature  of  the 
chief  clerk,  with  the  said  seal  affixed,  shall  be  compe- 
tent evidence  in  all  cases  in  which  the  original  records, 
books,  papers,  or  drawings,  could  be  evidence.  And  any 
person  making  application  therefor  may  have  certified 


RELATING  TO  PATENTS,  ETC.  473 

copies  of  the  records,  drawings,  and  other  papers  depos- 
ited in  said  office,  on  paying,  for  the  written  copies,  the 
sum  of  ten  cents  for  every  page  of  one  hundred  words ; 
and  for  copies  of  drawings,  the  reasonable  expense  of 
making  the  same. 

Sec.  5.  And   be   it  further  enacted,  That  all   patents   Patents  to  be 
issued  from  said  office  shall  be  issued  in  the  name  of  t;e^c"retary'   of 
the   United   States,  and   under   the   seal  of  said   office.  State  and  by 
and   be   signed  by  the  Secretary  of  State,   and  counter-  sioner. 
signed  by  the  Commissioner  of  the  said  office,  and  shall 
be  recorded,  together  with  the  descriptions,  specifications, 
and  drawings,  in  the  said  office,  in  books  to  bo  kept  for 
that  purpose.     Every  such   patent  shall   contain  a  short 
description   or  title   of  the  invention  or    discovery,  cor- 
rectly indicating  its  nature  and  design,  and  in  its  terms 
grant  to  the  applicant  or  applicants,  his  or  their  heirs, 
administrators,    executors,    or    assigns,    for   a    term    not 
exceeding  fourteen  years,  the  full  and  exclusive  right  and 
liberty  of  making,   using,   and  vending  to   others  to  be 
used,  the  said    invention   or  discovery,    referring  to  the 
specifications  for  the  particulars  thereof,  a  copy  of  which 
shall    be    annexed    to    the    patent,   specifying    what    the 
patentee  claims  as  his  invention  or  discovery. 

Sec  6.  A7id  be  it  further  enacted,  That  any  person  or  Applications, 
persons  having  discovered  or  invented  any  new  and  use-  '"^  ^' 
ful  art,  machine,  manufacture,  or  composition  of  matter, 
or  any  new  and  useful  improvements  on  any  art,  machine, 
manufacture,  or  composition  of  matter  not  known  or 
used  by  others  before  his  or  their  discovery  or  inven- 
tion thereof,  and  not,  at  the  time  of  his  application 
for  a  patent,  in  public  use  or  on  sale,  with  his  con- 
sent or  allowance,  as  the  inventor  or  discoverer,  and 
shall  desire  to  obtain  an  exclusive  property-  therein, 
may  make  application  in  writing,  to  the  Commissioner 
of  Patents,  expressing  such  desire,  and  the  Commis- 
sioner, on  due  proceedings  had,  may  grant  a  patent 
therefor.  But  before  any  inventor  shall  receive  a  patent  Specification, 
for  any  such  new  invention  or  discovery,  he  shall  deliver 
a  written  description  of  his  inventien  or  discovery,  and 
of  the  manner  and  process  of  making,  constructing, 
using,  and  compounding  the  same,  in  such  full,  clear, 
and  exact  terms,  avoiding  unnecessary  prolixity,  as  to 
enable  any  person  skilled  in  the  art  or  science  to  which 
40* 


474  LAWS    OF    THE    UNITED    STATES 

it  appertains,  or  with  which  it  is  most  nearly  connected, 
to  make,  construct,  compound  and  use  the  same  ;  and  in 
case  of  any  machine,  he  shall  fully  explain  the  principle, 
and  the  several  modes  in  which  he  has  contemplated  the 
application  of  that  principle  or  character  by  which  it 
may  be  distinguished  from  other  inventions  ;  and  shall 
particularly  specify  and  point  out  the  part,  improvement, 
or  combination,   which   he   claims  as  his  own  invention 

Drawings,  &c.  or   discovery.     He   shall,   furthermore,   accompany   the 
whole   with  a  drawing  or  drawings,  and   written  refer- 
ences, where  the  nature  of  the  case  admits  of  drawings  ; 
or  with  specimens  of  ingredients,  and  of  the  composition 
0  of  matter,  sufficient  in  quantity  for  the  purpose  of  experi- 

ment, where  the  invention  or  discovery  is  of  a  com- 
position of  matter;  which  descriptions  and  drawings, 
signed  by  the  inventor,  and  attested  by  two  witnesses, 
shall  be  filed  in  the  Patent  Office  ;  and  he  shall,  more- 
over, furnish  a  model  of  his  invention,  in  all  cases  which 
Models,  admit  of  a  representation  by  model,  of  a  convenient 
size   to  exhibit   advantageously  its   several   parts.     The 

jjj.^^j^^"'"  ^'^^  applicant  shall  also  make  oath,  or  affirmation,  that  he 
does  verily  believe  that  he  is  the  original  and  first  inven- 
tor or  discoverer  of  the  art,  machine,  composition,  or 
improvement,  for  which  he  solicits  a  patent ;  and  that 
he  does  not  know  or  believe  that  the  same  was  ever  before 
known  or  used  ;  and  also  of  what  country  he  is  a  citizen  ; 
which  oath  or  affirmation  may  be  made  before  any  per- 
son authorized  by  law  to  administer  oaths. 
Examination      Sec.  7.  And  he  it  further  enacted^  That,  on  the  filing 

of    invention,     -  ,  ......  ,  -^       ■ 

to   be    made,  O'    ^"7  such  application,   description,  and   specification, 

and    proceed- fjj^fj  [\^q  payment  of  the  duty   hereinafter  provided,  the 

ings    thereon,  .     . 

should  it  not  Commissioner  shall  make,  or  cause  to  be  made,  an  exam- 
„g^  ^   ination  of  the  alleged  new  invention  or  discovery  ;  and 

if,  on  any  such  examination,  it  shall  not  appear  to  the 
Commissioner  that  the  same  had  been  invented  or  discov- 
ered by  any  other  person  in  this  country,  prior  to  the 
alleged  invention  or  discovery  thereof  by  the  applicant, 
or  that  it  had  been  patented  or  described  in  any  printed 
publication  in  this  or  any  foreign  country,  or  had  been 
in  public  use  or  on  sale,  with  the  applicant's  consent  or 
allowance,  prior  to  the  application,  if  the  Commissioner 
shall  deem  it  to  be  sufficiently  useful  and  important,  it 
shall  be  his  duty  to  issue  a  patent  therefor.     But  when- 


RELATING  TO  PATENTS,  ETC.  475 

ever,  on  such  examination,  it  shall  appear  to  the  Com- 
missioner that  the  applicant  was  not  the  original  and  first 
inventor  or  discoverer  thereof,  or  that  any  part  of  that 
which  is  claimed  as  new  had  before  been  invented  or 
discovered,  or  patented,  or  described  in  any  printed  pub- 
Hcation  in  this  or  any  foreign  country  as  aforesaid,  or 
that  the  description  is  defective  and  insufficient,  he  shall 
notify  the  applicant  thereof,  giving  him  briefly  such 
information  and  references  as  may  be  useful  in  judging 
of  the  propriety  of  renewing  his  application,  or  of  alter- 
ing his  specification  to  embrace  only  that  part  of  the  inven- 
tion or  discovery  which  is  new.  In  every  such  case,  if 
the  applicant  shall  elect  to  withdraw  his  application, 
relinquishing  his  claim  to  the  model,  he  shall  be  entitled 
to  receive  back  twenty  dollars,  part  of  the  duty  required 
by  this  act,  on  filing  a  notice  in  writing  of  such  election 
in  the  Patent  Oflice  ;  a  copy  of  which,  certified  by  the 
Commissioner,  shall  be  a  sufficient  warrant  to  the  treas- 
urer for  paying  back  to  the  said  applicant,  the  said  sum 
of  twenty  dollars.  But  if  the  applicant,  in  such  case  shall 
persist  in  his  claims  for  a  patent,  with  or  without  any 
alteration  of  his  specification,  he  shall  be  required  to 
make  oath  or  affirmation  anew,  in  manner  as  aforesaid  ; 
and  if  the  speci^cation  and  claim  shall  not  have  been  so 
modified  as,  in  the  opinion  of  the  Commissioner,  shall 
entitle  the  applicant  to  a  patent,  he  may,  on  appeal,  and 
upon  request  in  writing,  have  the  decision  of  a  board  of 
examiners,  to  be  composed  of  three  disinterested  per- 
sons, who  shall  be  appointed  for  that  purpose  by  the  Sec- 
retary of  State,  one  of  whom,  at  least,  to  be  selected,  if 
practicable  and  convenient,  for  his  knowledge  and  skill 
in  the  particular  art,  manufacture,  or  branch  of  science  to 
which  the  alleged  invention  appertains  ;  who  shall  be 
under  oath  or  affirmation  for  the  faithful  and  impartial 
performance  of  the  duty  imposed  upon  them  by  said 
appointment.  Said  board  shall  be  furnished  with  a  certifi- 
cate in  writing  of  the  opinion  and  decision  of  the  Com- 
missioner, stating  the  particular  grounds  of  his  objection, 
and  the  part  or  parts  of  the  invention  which  he  considers 
as  not  entitled  to  be  patented.  And  the  said  board  shall 
give  reasonable  notice  to  the  applicant,  as  well  as  to  the 
Commissioner,  of  the  time  and  place  of  their  meeting, 
that  they  may  have  an  opportunity  of  furnishing  them 


476 


LAWS     OF    THE    UNITED    STATES 


Proviso. 


Interfering 
applications. 


with  such  facts  and  evidence  as  they  may  deem  neces- 
sary to  a  just  decision  ;  and  il  shall  be  the  duty  of  the 
Commissioner  to  furnish  to  the  board  of  examiners  such 
information  as  he  may  possess  relative  to  the  matter 
under  their  consideration.  And  on  an  examination  and 
consideration  of  the  matter  by  such  board,  it  shall  be  in 
their  power,  or  of  a  majority  of  them,  to  reverse  the  deci- 
sion of  the  Commissioner,  either  in  whole  or  in  part ; 
and  their  opinion  being  certified  to  the  Commissioner, 
he  shall  be  governed  thereby  in  the  further  proceedings 
to  be  had  on  such  application  :  Provided,  hoivever,  That, 
before  a  board  shall  be  instituted  in  any  such  case,  the 
applicant  shall  pay  to  the  credit  of  the  treasury,  as  pro- 
vided in  the  ninth  section  of  this  act,  the  sum  of  twenty- 
five  dollars  ;  and  each  of  said  persons  so  appointed  shall 
be  entitled  to  receive,  for  his  services,  in  each  case,  a 
sum  not  exceeding  ten  dollars,  to  be  determined  and  paid 
by  the  Commissioner  out  of  any  moneys  in  his  hands, 
which  shall  be  in  full  compensation  to  the  persons  who 
may  be  so  appointed,  for  their  examination  and  certificate 
as  aforesaid. 

Sec.  8.  Aiid  be  it  further  enacted,  That  whenever  an 
application  shall  be  made  for  a  patent,  which,  in  the 
opinion  of  the  Commissioner,  would  interfere  with  any 
other  patent  for  which  an  application  may  be  pending, 
or  with  any  unexpired  patent  which  shall  have  been 
granted,  it  shall  be  the  duty  of  the  Commissioner  to  give 
notice  thereof  to  such  applicants,  or  patentees,  as  the 
case  may  be  ;  and  if  either  shall  be  dissatisfied  with  the 
decision  of  the  Commissioner  on  the  question  of  priority 
of  right  or  invention,  on  a  hearing  thereof,  he  may 
appeal  from  such  decision,  on  the  like  terms  and  condi- 
tions as  are  provided  in  the  preceding  section  of  this  act, 
and  the  like  proceedings  shall  be  had  to  determine  which, 
or  whether  either,  of  the  applicants  is  entitled  to  receive 
a  patent  as  prayed  for.  But  nothing  in  this  act  contained 
shall  be  construed  to  deprive  an  original  and  true 
inventor  of  the  right  to  a  patent  for  his  invention,  by 
reason  of  his  having  previously  taken  out  letters-patent 
therefor  in  a  foreign  country,  and  the  same  having  been 
published,  at  any  time  within  six  months  next  preceding 
the  filing  of  his  specification  and  drawings.  And  when- 
ever the  applicant  shall  request  it,  the   patent  shall  take 


RELATING  TO  PATENTS,  ETC.  477 

date  from  the  time  of  filing  of  the  specifications  and 
drawings,  not,  however,  exceeding  six  months  prior  to 
the  actual  issuing  of  the  patent  ;  and  on  like  request,  and 
the  payment  of  the  duty  herein  required,  by  any  appli- 
cant, his  specification  and  drawings  shall  be  filed  in  the 
secret  archives  of  the  office,  until  he  shall  furnish  the 
model,  and  the  patent  be  issued,  not  exceeding  the  term 
of  one  year,  the  applicant  being  entitled  to  notice  of  in- 
terfering applications. 

Sec.  9.  And  be  it  further  enacted,   That   before  any     Thirty  dol- 
application  for  a  patent  shall  be  considered  by  the  Com-  lo'^^,he''credh 
missioner  as  aforesaid,  the  applicant  shall   pay  into  the  0/  ''i<5  United 
Treasury  of  the  United  States,  or  into  the  Patent  Office,  rer  by  a  ciii- 
or  into  any  of  the  deposit  banks,  to  the  credit  of  the  ^^°'  °'''  ^'^' 
treasury,  if  he   be  a  citizen  in  the  United  States,  or  an 
alien,  and  shall   have  been  resident  in  the  United  States 
for  one  year  next  preceding,  and  shall  have  made  oath  of 
his  intention   to  become  a  citizen   thereof,  the    sum   of 
thirty  dollars;  if  a  subject  of  the  King  of  Great  Britain,  Five  hundred 
the  sum  of  five  hundred  dollars ;    and  all  other  persons  sujifJct  0/ g* 

the  sum  of  three  hundred  dollars  ;   for  which  payment  Britain,    and 
J      ,.  .  „        .  n      ^  three  hundred 

duplicate  receipts  shall  be  taken,  one  of  which  to  be  filed  hy  other  per- 

in  the  office  of  the  treasurer.     And  the  moneys  received  ^°°^" 

into  the  treasury  under  this  act  shall  constitute  a  fund  for 

the   payment  of  the  salaries   of  the   officers   and  clerks 

herein  provided  for,  and  all  other  expenses  of  the  Patent 

Office,  and  to  be  called  the  patent  fund. 

Sec  10.  And  le  it  further  enacted,  That  where  any    Inventors 

person  hath  made,  or  shall  have  made,  any  new  inven-  takuf'^^^a  'pa- 

tion,  discovery,  or  improvement,  on  account  of  which  a  tent,  their  ex- 

Gculors     o^c 

patent  might  by  virtue  of  this  act  be  granted,  and  such  may,  &c. 
person  shall  die  before  any  patent  shall  be  granted 
therefor,  the  right  of  applying  for  and  obtaining  such 
patent  shall  devolve  on  the  executor  or  administrator  of 
such  person,  in  trust  for  the  heirs-at-law  of  the  deceased, 
in  case  he  shall  have  died  intestate  ;  but  if  otherwise, 
then  in  trust  for  his  devisees,  in  as  full  and  ample  man- 
ner^ and  under  the  same  conditions,  limitations,  and  re- 
strictions as  the  same  was  held,  or  might  have  been 
claimed  or  enjoyed  by  such  person  in  his  or  her  lifetime  ; 
and  when  application  for  a  patent  shall  be  made  by  such 
legal  representatives,  the  oath  or  affirmation  provided  in 
the  sixth  section  of  this  act  shall  be  so  varied  as  to  be 
applicable  to  them. 


478  LAWS     OF    THE    UNITED     STATES 

Assignment  Sec.  11.  And  he  it  further  enacted,  That  every  patent 
and'*  'record  ^^^^'^  ^^  assignable  in  law,  either  as  to  the  whole  interest, 
thereof.  or  any  undivided  part  thereof,  by  any  instrument  in  writ- 

ing ;  which  assignment,  and  also  every  grant  and  con- 
veyance of  the  exclusive  right  under  any  patent,  to  make 
and  use,  and  to  grant  toothers  to  make  and  use,  the  thing 
patented  within  and  throughout  any  specified  part  or  por- 
tion of  the  United  States,  shall  be  recorded  in  the  Patent 
Office  within  three  months  from  the  execution  thereof, 
for  which  the  assignee  or  grantee  shall  pay  to  the  Com- 
missioner the  sum  of  three  dollars. 
Caveat  may  Sec.  12.  And  he  it  further  enacted.  That  any  citizen 
be  entered,  ^f  ^.j^g  United  States,  or  alien,  who  shall  have  bfeen  a  resi- 
dent of  the  United  States  one  year  next  preceding,  and 
shall  have  made  oath  of  his  intention  to  become  a  citizen 
thereof,  who  shall  have  invented  any  new  art,  machine, 
or  improvement  thereof,  and  shall  desire  further  time 
to  mature  the  same,  may,  on  paying  to  the  credit  of 
the  treasury,  in  manner  as  provided  in  the  ninth  sec- 
tion of  this  act,  the  sum  of  twenty  dollars,  file  in  the 
Patent  Office  a  caveat  setting  forth  the  design  and  pur- 
pose thereof,  and  its  principal  and  distinguishing  charac- 
teristics, and  praying  protection  of  his  right,  till  he  shall 
have  matured  his  invention ;  which  sum  of  twenty 
dollars,  in  case  the  person  filing  such  caveat  shall 
afterwards  take  out  a  patent  for  the  invention  therein 
mentioned,  shall  be  considered  a  part  of  the  sum  herein 
required  for  the  same.  And  such  caveat  shall  be 
filed  in  the  confidential  archives  of  the  office,  and  pre- 
served in  secresy.  And  if  application  shall  be  made 
by  any  other  person,  within  one  year  from  the  time  of 
filing  such  caveat,  for  a  patent  of  any  invention  with 
which  it  may  in  any  respect  interfere,  it  shall  be  the 
duty  of  the  Commissioner  to  deposit  the  description, 
specifications,  drawings,  and  model,  in  the  confidential 
archives  of  the  office,  and  to  give  notice  (by  mail)  to 
the  person  filing  the  caveat  of  such  application,  who 
shall,  within  three  months  after  receiving  the  notice,  if 
he  would  avail  himself  of  the  benefit  of  his  caveat,  file 
his  description,  specification,  drawings,  and  model ;  and 
if,  in  the  opinion  of  the  Commissioner,  the  specifications 
of  claim  interfere  with  each  other,  like  proceedings  may 
be  had  in  all  respects  as  are  in  this  act  provided  in  the 


RELATING    TO    PATENTS,     ETC.  479 

case  of  interfering  applications.  Provided,  however,  Proviso. 
That  no  opinion  or  decision  of  any  board  of  examiners, 
under  the  provisions  of  this  act,  shall  preclude  any 
person  interested  in  favor  of  or  against  the  validity  of 
any  patent  which  has  been  or  may  hereafter  be  granted, 
from  the  right  to  contest  the  same  in  any  judicial  court, 
in  any  action  in  which  its  validity  may  come  in  ques- 
tion. 

Sec.  13.  And  be  it  further  enacted.  That   whenever    Patents  in- 

any  patent,  which  has  heretofore  been  granted,  or  which  y'^'."^  ^'"°'"'^'^' 
•^    '  a  '  K'ciive   speci- 

shall  hereafter  be  granted,  shall  be  inoperative  or  invalid,  tications  may 

by   reason   of  a  defective   or  insufficient  description    or  eTed,  and  new 

specification,  or  by  reason  of  the  patentee  claiming  in  his  Y^^^'^^^    /"^y 

.  .  .  .  .      '  ^  be    issued    la 

specification,  as  his  own  invention,  more  than  he  had  or  certain  cases. 

shall  have  a  right  to  claim  as  new,  if  the  error  has  or 
shall  have  arisen  by  inadvertency,  accident,  or  mistake, 
and  without  any  fraudulent  or  deceptive  intention,  it  shall 
be  lawful  for  the  Commissioner,  upon  the  surrender  to 
him  of  such  patent,  and  the  payment  of  the  further  duty 
of  fifteen  dollars,  to  cause  a  new  patent  to  be  issued  to 
the  said  inventor  for  the  same  invention,  for  the  residue 
of  the  period  then  unexpired,  for  which  the  original 
patent  was  granted,  in  accordance  with  the  patentee's 
corrected  description  and  specification.  And  in  case  of 
his  death,  or  any  assignment  by  him  made  of  the  original 
patent,  a  similar  right  shall  vest  in  his  executors,  admin- 
istrators, or  assignees.  And  the  patent  so  reissued, 
together  with  the  corrected  description  and  specifications, 
shall  have  the  same  effect  and  operation  in  law,  on 
the  trial  of  all  actions  hereafter  commenced  for  causes 
subsequently  accruing,  as  though  the  same  had  been 
originally  filed  in  such  corrected  form,  before  the  issuing 
of  the  original  patent.  And  whenever  the  original  Patentee  may 
patentee  shall  be  desirous  of  adding  the  description  and  ^^l^s  \.o  his 
specification  of  any  new  improvement  of  the  original  paient. 
invention  or  discovery,  which  shall  have  been  invented 
or  discovered  by  him  subsequent  to  the  date  of  his 
patent,  he  may,  like  proceedings  being  had  in  all  respects 
as  in  the  case  of  original  applications,  and  on  the  pay- 
ment of  fifteen  dollars,  as  hereinbefore  provided,  have 
the  same  annexed  to  the  original  description  and  specifi- 
cation ;  and  the  commissioner -shall  certify,  on  the  mar- 
gin  of  such  annexed   description  and   specification,   the 


480  LAWS    OF    THE     UNITED     STATES 

time  of  its  being  annexed  and  recorded  ;    and  the  same 
shall  thereafter  have  the  same  effect  in  law,  to  all  intents 
and   purposes,  as  though  it  had  been  embraced  in  the 
original  description  and  specification. 
Courts  may      gg^,^  j4_  yj„^  ^g  .(f  further  enacted,  That  whenever,  in 

render    judg-  '  .  ... 

ment  for  a  any  action  for  damages  [forj  makmg,  usmg,  or  selhng 
ceSinTth^ree  the  thing  whereof  the  exclusive  right  is  secured  by  any 
times  the  am't  patent  heretofore  granted,  or  by  any  patent  which  may 

ofactualdam- *  »        ,  ,  i-         i     n    ■  j        j    /<        t 

ages.  hereafter  be  granted,  a  verdict  shall  be  rendered  tor  the 

plaintiff  in   such  action,  it  shall  be  in  the  power  of  the 
court  to  render  judgment  of  any  sum  above  the  amount 
found  by  such  verdict  as  the  actual  damages  sustained  by 
the  plaintiff,  not  exceeding  three  times  the  amount  there- 
of, according   to   the    circumstances    of  the    case,    with 
costs ;  and  such  damages  may  be  recovered  by  action  on 
the  case,   in  any   court   of  competent  jurisdiction,  to  be 
brought  in  the  name  or  names  of  the  person  or  persons 
interested,  whether  as  patentee,  assignees,  or  as  grantees 
of  the   exclusive  right  within  and  throughout  a  specified 
part  of  the  United  States. 
Defendant        Sec.  15.  And  be  it  further  enacted,  That  the  defend- 
ffeu'eral  issue,  ant  in  any  such  action  shall   be   permitted   to  plead   the 
*^*^-  general  issue,  and  to  give  this  act  and  any  special  matter 

in  evidence,  of  which  notice  in  writing  may  have  been 
given  to  the  plaintiff  or  his  attorney,  thirty  days  before 
trial,  tending  to  prove  that  the  description  and  specifica- 
tion filed  by  the  plaintiff,  does  not  contain  the  whole 
truth  relative  to  his  invention  or  discovery,  or  that  it  con- 
tains more  than  is  necessary  to  produce  the  described 
effect ;  which  concealment  or  addition  shall  fully  appear 
to  have  been  made  for  the  purpose  of  deceiving  the  pub- 
lic, or  that  the  patentee  was  not  the  original  and  first  in- 
ventor or  discoverer  of  the  thing  patented,  or  of  a  substan- 
tial and  material  part  thereof  claimed  as  new,  or  that  it 
had  been  described  in  some  public  work  anterior  to  the 
supposed  discovery  thereof  by  the  patentee,  or  had  been 
in  public  use  or  on  sale  with  the  consent  and  allowance 
of  the  patentee  before  his  application  for  a  patent,  or  that 
he  had  surreptitiously  or  unjustly  obtained  the  patent  for 
that  which  was  in  fact  invented  or  discovered  by  another, 
who  was  using  reasonable  diligence  in  adapting  and  per- 
fecting the  same  ;  or  that  the  patentee,  if  an  alien  at 
the  time  the  patent  was  granted,  had  failed  and  neglected, 


KELATING  TO  PATENTS,  ETC.  481 

for  the  space  of  eighteen  months  from  the  date  of  the 
patent,  to  put  and  continue  on  sale  to  the  pubUc,  on 
reasonable  terms,  the  invention  or  discovery  for  which 
the  patent  issued ;  and  whenever  the  defendant  relies  in 
his  defence  on  the  fact  of  a  previous  invention,  know- 
ledge, or  use  of  the  thing  patented,  he  shall  state,  in  his 
notice  of  special  matter  the  names  and  places  of  resi- 
dence of  those  whom  he  intends  to  prove  to  have  pos- 
sessed a  prior  knowledge  of  the  thing  and  where  the 
same  had  been  used  ;  in  either  of  which  cases,  judgment 
shall  be  rendered  for  the  defendant,  with  costs  :  Provided,  Proviso. 
however.  That  whenever  it  shall  satisfactorily  appear 
that  the  patentee,  at  the  time  of  making  his  application 
for  the  patent  believed  himself  to  be  the  first  inventor 
or  discoverer  of  the  thing  patented,  the  same  shall  not 
be  void  on  account  of  the  invention  or  discovery,  or 
any  part  thereof,  having  been  before  known  or  used  in 
any  foreign  country  ;  it  not  appearing  that  the  same,  or 
any  substantial  part  thereof,  had  before  been  patented 
or  described  in  any  printed  publication  ;  And  provided, 
also.  That  whenever  the  plaintiff  shall  fail  to  sustain  his 
action  on  the  ground  that  in  his  specification  or  claim  is 
embraced  more  than  that  of  which  he  was  the  first  in- 
ventor, if  it  shall  appear  that  the  defendant  had  used  or 
violated  any  part  of  the  invention  justly  and  truly  spe- 
cified and  claimed  as  new,  it  shall  be  in  the  power  of  the 
court  to  adjudge  and  award,  as  to  costs  as  may  appear  to 
be  just  and  equitable. 

Sec  16.  And  be  it  further  enacted,  That  whenever  Interfering 
there  shall  be  two  interfering  patents,  or  whenever  a  P^'^"*^:  ^■ 
patent  or  application  shall  have  been  refused  on  an 
adverse  decision  of  a  board  of  examiners,  on  the  ground 
that  the  patent  applied  for  would  interfere  with  an  un- 
expired patent  previously  granted,  any  person  interested 
in  any  such  patent,  either  by  assignment  or  otherwise  in 
the  one  case,  and  any  such  applicant  in  the  other  case, 
may  have  remedy  by  bill  in  equity  ;  and  the  court  having 
cognizance  thereof,  on  notice  to  adverse  parties,  and 
other  due  proceedings  had,  may  adjudge  and  declare 
either  the  patents  void  in  the  whole  or  in  part,  or  in- 
operative and  invalid  in  any  particular  part  or  portion 
of  the  United  States,  according  to  the  interest  which 
the  parties  to  such  suit  may  possess  in  the  patent  or  the 
41 


482  LAWS    OF    THE    UNITED    STATES 

inventions  patented,  and  may  also  adjudge  that  such 
applicant  is  entitled,  according  to  the  principles  and 
provisions  of  this  act,  to  have  and  receive  a  patent  for  his 
invention,  as  specified  in  his  claim,  or  for  any  part 
thereof,  as  the  fact  of  priority  of  right  or  invention 
shall,  in  any  such  case,  be  made  to  appear.  And  such 
adjudication,  if  it  be  in  favor  of  the  right  of  such  ap- 
plicant, shall  authorize  the  Commissioner  to  issue  such 
patent  on  his  filing  a  copy  of  the  adjudication,  and 
otherwise  complying  with  the  requisitions  of  this  act : 
Provi-o.  Provided,  however.  That  no  such  judgment  or  adjudica- 
tion shall  affect  the  rights  of  any  person,  except  the 
parties  to  the  action,  and  those  deriving  title  from  or 
under  them  subsequent  to  the  rendition  of  such  judg- 
ment. 

Actions  cog-      Sec.  17.  And  he  it  further  enacted.  That  all  actions, 
nizable  in  cir-       .,  ,  .  ,  .  .  ,  i  r 

cuit  courts  of  suits,  controversies,  and  cases  arising  under  any  law  ot 

the  U.  S.,&c.  t]jg   United  States,  granting  or  confirming  to  inventors 
the    exclusive    right   to   their    inventions    or    discoveries, 
shall    be  originally  cognizable,  as  well  in  equity    as    at 
law,  by  the  circuit  courts  of   the  United  States,  or  any 
district  court    having  the   powers   and  jurisdiction   of   a 
circuit  court ;  which  courts  shall  have  power,  upon  a  bill 
in  equity  filed  by  any  party  aggrieved,  in  any  such  case, 
to  grant  injunctions,  according  to  the  course  and  princi- 
ples  of  courts  of  equity,  to  prevent  the  violation  of  the 
rights  of  any  inventor  as  secured  to  him  by  any  law  of 
the  United  States,  on  such  terms  and  conditions  as  said 
Proviso.      courts  may  deem  reasonable  :  Provided,  however.  That 
from  all  judgments  and  decrees  from  any  such  court  ren- 
dered in  the  premises,  a  writ  of  error  or  appeal,  as  the 
■  case  may  require,  shall  lie  to  the  Supreme  Court  of  the 
United  States,  in  the  same  manner,  and  under  the  same 
circumstances,  as  is  now  provided  by  law  in  other  judg- 
ments and  decrees  of  circuit  courts,  and  in  all  other  cases 
in  which  the  court  shall  deem  it  I'easonable  to  allow  the 
same. 
Patents  may      Sec.  18.  And  he  it  f urther  enacted,  Thdii  ^henewGV  ^wy 
seven^yearsln  P^^^"*^^^  *^^  ^'^  invention  or  discovery  shall  desire  an  ex- 
eertain  cases,  tension  of  his  patent  beyond  the  term  of  its  limitation, 
he   may   make   application  therefor,  in    writing,    to   the 
Commissioner   of   the    Patent    Office,    setting    forth    the 
'  grounds  thereof;  and   the   Commissioner   shall,   on  the 


RELATING  TO  PATENTS,  ETC.  483 

applicant's  paying  the  sum  of  forty  dollars  to  the  credit 
of  the  treasury,  as  in  the  case  of  an  original  application 
for  a  patent,  cause  to  be  published  in  one  or  more  of  the 
principal  newspapers  in  the  city  of  Washington,  and  in 
such  other  paper  or  papers  as  he  may  deem  proper,  pub- 
lished in  the  section  of  country  most  interested  adversely 
to  the  extension  of  the  patent,  a  notice  of  such  applica- 
tion, and  of  the  time  and  place  when  and  where  the 
same  will  be  considered,  that  any  person  may  appear  and 
show  cause  why  the  extension  should  not  be  granted. 
And  the  Secretary  of  State,  the  Commissioner  of  the 
Patent  Office,  and  the  Solicitor  of  the  Treasury,  shall 
constitute  a  board  to  hear  and  decide  upon  the  evidence 
produced  before  them,  both  for  and  against  the  exten- 
sion, and  shall  sit  for  that  purpose  at  the  time  and  place 
designated  in  the  published  notice  thereof.  The  patentee 
shall  furnish  to  said  board  a  statement,  in  writing,  under  , 

oath,  of  the  ascertained  value  of  the  invention,  and  of  • 
his  receipts  and  expenditures,  sufficiently  in  detail  to 
exhibit  a  true  and  faithful  account  of  loss  and  profit  in 
any  manner  accruing  to  him  from  and  by  reason  of  said 
invention.  And  if,  upon  a  hearing  of  the  matter,  it  shall 
appear  to  the  full  and  entire  satisfaction  of  said  board, 
having  due  regard  to  the  public  interest  therein,  that  it 
is  just  and  proper  that  the  term  of  the  patent  should  be 
extended,  by  reason  of  the  patentee,  without  neglect  or 
fault  on  his  part,  having  failed  to  obtain,  from  the  use 
and  sale  of  his  invention,  a  reasonable  remuneration  for 
the  time,  ingenuity,  and  expense  bestowed  upon  the 
same,  and  the  introduction  thereof  into  use,  it  shall  be 
the  duty  of  the  Commissioner  to  renew  and  extend  the 
patent,  by  making  a  certificate  thereon  of  such  exten- 
sion, for  the  term  of  seven  years  from  and  after  the  ex- 
piration of  the  first  term  ;  which  certificate,  with  a  certi- 
ficate of  said  board  of  their  judgment  and  opinion  as 
aforesaid,  shall  be  entered  on  record  in  the  Patent  Office ; 
and  thereupon  the  said  patent  shall  have  the  same  efTect 
in  law  as  though  it  had  been  originally  granted  for  the 
term  of  twenty-one  years  ;  and  the  benefit  of  such  re- 
newal shall  extend  to  assignees  and  grantees  of  the  right 
to  use  the  thing  patented,  to  the  extent  of  their  respective 
interests  therein  :  Provided,  however,  That  no  extension  Proviso. 
of  a  patent  shall  be  granted  after  the  expiration  of  the 
term  for  which  it  was  originally  issued. 


484 


LAWS     OF    THE    UNITED    STATES 


Library  of  Sec.  19.  And  be  it  further  enacted,  That  there  shall 
Faient  Office.  ^^^  provided,  for  the  use  of  said  office,  a  library  of  scien- 
tific works  and  periodical  publications,  both  foreign  and 
American,  calculated  to  facilitate  the  discharge  of  the 
duties  hereby  required  of  the  chief  officers  therein,  to  be 
purchased  under  the  direction  of  the  Committee  of  the 
Library  of  Congress.  And  the  sum  of  fifteen  hundred 
dollars  is  hereby  appropriated  for  that  purpose,  to  be  paid 
out  of  the  patent  fund. 
Models  to  be  Sec.  20.  And  be  it  further  enacted,  That  it  shall  be 
arranU^d.  ^"  ^^^  '^^^J  ^^  ^^^  Commissioner  to  cause  to  be  classified 
and  arranged,  in  such  rooms  or  galleries  as  may  be  pro- 
vided for  that  purpose,  in  suitable  cases,  when  necessary 
for  their  preservation,  and  in  such  manner  as  shall  be 
conducive  to  a  beneficial  and  favorable  display  thereof, 
the  models  and  specimens  of  compositions  and  of  fabrics, 
and  other  manufactures  and  works  of  art,  patented  or 
unpatented,  which  have  been,  or  shall  hereafter  be  de- 
posited in  said  office.  And  said  rooms  or  galleries  shall 
be  kept  open  during  suitable  hours  for  public  inspection. 
Former  acts  Sec.  21.  And  be  it  further  enacted.  That  all  acts  and 
parts  of  acts  heretofore  passed  on  this  subject  be,  and 
Proviso,  the  same  are  hereby,  repealed  :  Provided,  however,  That 
all  actions  and  processes  in  law  or  equity  sued  out  prior 
to  the  passage  of  this  act,  may  be  prosecuted  to  final 
judgment  and  execution,  in  the  same  manner  as  though 
this  act  had  not  been  passed,  excepting  and  saving  the 
application  to  any  such  action  of  the  provisions  of  the 
fourteenth  and  fifteenth  sections  of  this  act,  so  far  as 
Proviso,  they  may  be  applicable  thereto:  Ajid  provided,  also, 
That  all  applications  for  petitions  for  patents,  pending 
at  the  time  of  the  passage  of  this  act,  in  cases  where  the 
duty  has  been  paid,  shall  be  proceeded  with  and  acted 
on  in  the  same  manner  as  though  filed  after  the  passage 
thereof. 

JAMES  K.  POLK, 
Speaker  of  the  House  of  Representatives. 
W.  R.  KING, 
President  of  the  Senate,  pro  tempore. 
Approved  July  4,  1836. 

ANDREW  JACKSON. 


RELATING     TO    PATENTS,    ETC. 


485 


CHAP.  XLV.  —  An  Act  in  addition  to  the  act  to  promote  the  progress 
of  science  and  useful  arts. 

Be  it  enacted  hy  the  Senate  and  House  of  Representa-     pa^gpts  is- 
tives  of  the   United   States  of  America  in  Congress  as-  sued,  and  as- 

,,,,_,,  ,  ,        .  •  p  signments  ex- 

sembled^  That  any  person  who  may  be  in  possession  ot,  ecuted  and  re- 
or  in  any  way  interested  in,  any  patent  for  an  invention,  ^°J^^'^'P"°'' ^^^ 
discovery,  or  improvement,  issued  prior  to  tlie  fifteenth  her,  is36,  may 
day  of  December,  in  the  year  of  our  Lord  one  thousand  j^g^[,  ^ 
eight  hundred  and  thirty-six,  or  in  an  assignment  of  any 
patent,  or  interest  therein,  executed  and  recorded  prior 
to  the  said  fifteenth  day  of  December,  may,  without 
charge,  on  presentation,  or  transmission  thereof  to  the 
Commissioner  of  Patents,  have  the  same  recorded  anew 
in  the  Patent  Office,  together  with  the  descriptions,  spe- 
cifications of  claim,  and  drawings  annexed  or  belonging 
to  the  same  ;  and  it  shall  be  the  duty  of  the  Commis- 
sioner to  cause  the  same,  or  any  authenticated  copy  of 
the  original  record,  specification,  or  drawing,  which  he 
may  obtain,  to  be  transcribed  and  copied  into  books  of 
record  to  be  kept  for  that  purpose  ;  and  wherever  a 
drawing  was  not  originally  annexed  to  the  patent  and 
referred  to  in  the  specification,  any  drawing  produced  as 
a  delineation  of  the  invention,  being  verified  by  oath  in 
such  manner  as  the  Commissioner  shall  require,  may  be 
transmitted  and  placed  on  file,  or  copied  as  aforesaid, 
together  with  certificate  of  the   oath  ;    or  such   drawings  * 

may  be   made   in   the  office,   under  the   direction  of  the 
Commissioner,  in  conformity  with  the  specification.     And    Measures  to 
it  shall  be  the   duty  of  the   Commissioner  to  take  such  obtain       pa- 
measures  as  may  be  advised  and  determined  by  the  board  J_^"'^>  ^^■'  ^" 
-^  •'be     recorded, 

of  Commissioners  provided   for  in  the  fourth  section  of  &c. 
this  act,  to  obtain   the  patents,  specifications,  and  copies 
aforesaid,   for  the   purpose  of  being  so  transcribed  and 
recorded.     And  it  shall  be  the  duty  of  each  of  the  seve-   clerks  of  the 
ral  clerks  of  the   judicial  courts  of  the  United  States  to  J'j.'H'^^'^l 'courts 

••  .     .  01 L.  blates  to 

transmit,  as  soon  as  may  be,  to  the  Commissioner  of  the  transmit 
Patent  Office,  a  statement  of  all  the  authenticated  copies  au^the'nti'oa^ied 

of  patents,  descriptions,  specifications,  and    drawings  of  copies  of  pa- 
.      ^     .  ,     ,.  \    ^  ,  '  ,        .  tents, &c.,pri- 

inventions   and  discoveries   made  and  executed  prior  to  or  to  i5thDe- 

the  aforesaid  fifteenth  day  of  December,  which  may  be  ^^""tjer,  i836, 
found  on  the  files  of  his  office  ;  and  also  to  make  out  and 
41* 


486  LAWS     OF     THE    UNITED    STATES 

transmit  to  said  Commissioner,  for  record  as  aforesaid,  a 
certified  copy  of  every  such  patent,  description,  specifi- 
cation, or  drawing,  which  shall  be  specially  required  by 
said  Commissioner. 

pie^'of  such      ^^^'  2'  ^"^  *^  *^  further  enacted.  That  copies  of  such 

lecord,     fee,  record  and  drawings,  certified  by  the  Commissioner,  or, 

in  any  judicial '"  his  absence,  by  the  chief  clerk,  shall  be   prima   facie 

court oiu.  S., evidence  of  the  particulars  of  the  invention  and  of  the 

patent    granted    therefor  in    any    judicial    court    of    the 

United  States,  in  all  cases  where   copies  of  the  original 

No  patent,  record  or  specification  and  drawings  would  be  evidence, 

OLC  ISSU6C1  o  ' 

(kc ',  prior  to  without  proof  of  the  loss  of  such  originals;  and  no 
laTe^To^be  re-  P^*^"^  issued  prior  to  the  aforesaid  fifteenth  day  of  De- 
ceived in  evi-cember  shall,  after  the  first  day  of  June  next,  be  received 
courts,  after  ^^  evidence  in  any  of  the  said  courts  in  behalf  of  the 
1st  June  next,  patentee  or  other  person  who  shall  be  in  possession  of  the 

unless  record-  '^  .  '  ' 

ed  anew.         same,  unless  it  shall  have  been  so  recorded  anew,  and  a 

drawing  of  the   invention,   if  separate   from    the  patent, 

verified   as   aforesaid,   deposited    in  the    Patent   Office ; 

nor   shall    any    written   assignment   of  any  such  patent, 

executed    and    recorded    prior  to  the  said   fifteenth   day 

of  December,  be  received    in  evidence  in   any   of  the 

said   courts  in  behalf  of  the  assignee  or  other  person  in 

possession  thereof,  until   it  shall   have  been  so  recorded 

anew. 

New  patents      Sec.  3.  And  he  it   further  enacted,  That,  whenever  it 

to    be    issued  .     . 

for  tiiose  lost  shall  appear  to  the  Commissioner  that  any  patent  was 
ou  or^^before  clestroyed  by  the  burning  of  the  Patent  Office  building 

December  15,  on  the  aforesaid  fifteenth  day  of  December,  or  was  other- 

1836.  .  .  . 

wise  lost  prior  thereto,  it  shall  be  his  duty,  on  applica- 
tion therefor  by  the  patentee  or  other  person  interested 
therein,  to  issue  a  new  patent  for  the  same  invention  or 
discovery,  bearing  the  date  of  the  original  patent,  with 
his  certificate  thereon,  that  it  was  made  and  issued 
pursuant  to  the  provisions  of  the  third  section  of  this  act, 
Proviso.  and  shall  enter  the  same  of  record  :  Provided,  however. 
That  before  such  patent  shall  be  issued,  the  applicant 
therefor  shall  deposit  in  the  Patent  Office  a  duplicate, 
as  near  as  may  be,  of  the  original  model,  drawings,  and 
descriptions,  with  specifications  of  the  invention  or  dis- 
covery, verified  by  oath,  as  shall  be  required  by  the 
Commissioner;  and  such  patent  and  copies  of  such  draw- 
ings and  descriptions,  duly  certified,  shall  be  admissible 


RELATING  TO  PATENTS,  ETC.  487 

as  evidence  in  any  judicial  court  of  the  United  States, 
and  shall  protect  the  rights  of  the  patentee,  his  adminis- 
trators, heirs,  and  assigns,  to  the  extent  only  in  which 
they  would  have  been  protected  by  the  original  patent 
and  specification. 

Sec.  4.  And  be  it  further  enacted.  That  it  shall  be  the   Duplicates  of 
duty  of  the  Commissioner  to  procure  a  duplicate  of  such  eL'^'^o  be"pro- 
of  the  models  destroyed  by  fire  on  the  aforesaid  fifteenth  cured, 
day  of  December,  as  were  most  valuable  and  interesting, 
and  whose  preservation   would  be   important  to  the  pub- 
lic ;    and   such  as   would  be   necessary   to   facilitate  the 
just  discharge  of  the  duties  imposed  by  law  on  the  Com- 
missioner  in  issuing  patents,  and  to  protect  the  rights  of 
the   public   and   of  patentees   in   patented  inventions  and 
improvements  :  Provided,  That  a  duplicate  of  such  mod-     Proviso, 
els  may  be  obtained  at  a  reasonable  expense  :    And  pro-   Further  pro- 
vided,  also,   That  the  whole  amount  of  expenditure    for"^*'' 
this  purpose  shall  not  exceed  the  sum  of  one   hundred 
thousand  dollars.     .A.nd  there  shall  be  a  temporary  board  A  temporary 
of  Commissioners,  to  be  composed   of  the   Commissioner  ^^ij^glQ^p^g  ^^ 

of  the  Patent  Office  and  two  other  persons  to  be  appointed  ^^  appointed  ; 

I       r>       •  1  1  1  •       I     11    1  -1  ,  their  duties, 

by  the  President,  whose  duty  it  shall  be  to  consider  and 

determine  upon  the  best  and  most  judicious  mode  of 
obtaining  models  of  suitable  construction  ;  and,  also,  to 
consider  and  determine  what  models  may  be  procured  in 
pursuance  of,  and  in  accordance  with,  the  provisions  and 
limitations  in  this  section  contained.  And  said  Commis- 
sioners may  make  and  establish  all  such  regulations, 
terms,  and  conditions,  not  inconsistent  with  law,  as  in 
their  opinion  may  be  proper  and  necessary  to  carry  the 
provisions  of  this  section  into  effect,  according  to  its 
true  intent. 

Sec.  5.  And  he  it  further  enacted.  That,  whenever  a  Patents  re- 
patent  shall  be  returned  for  correction  and  reissue,  under  ^ecdon  ""^fcc"^ 
the   thirteenth  section   of  the  act  to  which  this  is   addi- under  the  isih 

.  ,  ,      section  of  the 

tional,  and  the  patentee  shall  desire  several  patents  to  be  act  to  which 
issued  for  distinct  and  separate  parts  of  the  thing  patented,  j!^^®  iV'*'*'^'" 
he  shall  first  pay,  in  manner  and  in  addition  to  the  sum 
provided  by  that  act,  the  sum  of  thirty  dollars  for  each   Act  of  is36, 
additional   patent   so   to   be  issued  :  Provided,  hoicever,     Proviso. 
That  no  patent  made  prior  to  the  aforesaid  fifteenth  day 
of  December,   shall  be   corrected   and    reissued    until    a 
(Juplicate  of  the  model  and  drawing  of  the  thing,  as  origi- 


488  LAWS    OF    THE    UNITED     STATES 

nally  invented,  verified  by  oath  as  shall  be  required  by 
the  Commissioner,  shall  be  deposited  in  the  Patent  Office. 

No  addition  jsJqj.  shall  any   addition   of  an  improvement  be  made  to 
&c.,     to     be  ,  r.  1  L 

made  lo  any  any  patent  heretofore  granted,  nor  any  new  patent  be 
patent  hereto- jgg^^g^  ^^^  ^^  improvement*  made  in  any  machine,  man- 
fee,    until    a  ufacture,  or  process,  to  the  original  inventor,  assignee, 

veritieddupli-  ^  ^      ^    ^u        r  j-      i    • 

caie  model,  or  possessor,  of  a  patent  therefor,  nor  any  disclaimer 
&c ,  is  depos- jje   admitted    to   record,    until    a   duplicate    model    and 

itcd.  occ. 

drawing  of  the  thing  originally  invented,  verified  as 
aforesaid,  shall  have  been  deposited  in  the  Patent  Office, 
if  the  Commissioner  shall  require  the  same  ;  nor  shall 
any  patent  be  granted  for  an  invention,  improvement, 
or  discovery,  the  model  or  drawing  of  which  shall  have 
been  lost,  until  another  model  and  drawing,  if  required 
by  the  Commissioner,  shall,  in  like  manner,  be  deposited 
Compensa-  in  the  Patent  Office.  And  in  all  such  cases,  as  well  as 
el°s"  &c!  '"°  "  ii^  those  which  may  arise  under  the  third  section  of  this 
act,  the  question  of  compensation  for  such  models  and 
drawing,  shall  be  subject  to  the  judgment  and  decision 
of  the  Commissioners  provided  for  in  the  fourth  section, 
under  the  same  limitations  and  restrictions  as  are  therein 
prescribed. 
Patents  here-  Sec.  6.  And  be  it  further  enacted,  That  any  patent 
sued.  °  ^  *^  hereafter  to  be  issued,  may  be  made  and  issued  to  the 
assignee  or  assignees  of  the  inventor  or  discoverer,  the 
assignment  thereof  being  first  entered  of  record,  and  the 
application  therefor  being  duly  made,  and  the  specifica- 
tion duly  sworn  to  by  the  inventor.  And  in  all  cases 
hereafter,  the  applicant  for  a  patent  shall  be  held  to  fur- 
nish duplicate  drawings,  whenever  the  case  admits  of 
drawings,  one  of  which  to  be  deposited  in  the  office,  and 
the  other  to  be  annexed  to  the  patent,  and  considered  a 
part  of  the  specification. 
Whenever       Sec.  7.  And  be  it  further  enacted.  That  whenever  any 

any    patentee  ,     ,,     ,  ,  ,     ■       j  -j 

shall,  through  patentee  shall    have,  through  inadvertence,  accident,   or 

&c   makehi's  "mistake,  made  his  specification  of  claim  too  broad,  claim- 
specification    ing  more  than  that  of  which  he  was  the  original  or  first 
he,  &c., 'may  inventor,  some  material  and  substantial  part  of  the  thing 
"l'^^^      c^^^'  patented    being    truly    and    justly    his    own,   any    such 
patentee,    his    administrators,     executors,    and    assigns, 
whether  of  the  whole   or  of  a  sectional  interest  therein, 
may  make  disclaimer  of  such  parts  of  the  thing  patented 
as  the  disclaimant  shall  not  claim  to  hold  by  virtue  of 


RELATING    TO    PATENTS,     ETC.  489 

the  patent  or  assignment,  stating  therein  the  extent  of 
his  interest  in  such  patent ;  which  disclaimer  shall  be  in 
writing,  attested  by  one  or  more  witnesses,  and  recorded 
in  the  Patent  Office,  on  payment  by  the  person  disclaim- 
ing, in  manner  as  other  patent  duties  are  required  by 
law  to  be  paid,  of  the  sum  of  ten  dollars.  And  such 
disclaimer  shall  thereafter  be  taken  and  considered  as 
part  of  the  original  specification,  to  the  extent  of  the 
interest  which  shall  be  possessed  in  the  patent  or  right 
secured  thereby,  by  the  disclaimant,  and  by  those  claim- 
ing by  or  under  him,  subsequent  to  the  record  thereof. 
But  no  such  disclaimer  shall  effect  any  action  pending 
at  the  time  of  its  being  filed,  except  so  far  as  may  relate 
to  the  question  of  unreasonable  neglect  or  delay  in  filing 
the  same. 

Sec.  8.  And    be   it  further    enacted.   That   whenever  Applications 

...  1     ,1    ,  1  1       /-(  •     •  />  f'^r    additions 

application  shall  be  made  to  the  Commissioner  lor  any  to  newly  dis- 

addition  of  a  newly  discovered  improvement  to  be  made '^"^'^'"^'^    .''"' 
.'  '  provementsto 

to  an  existing  patent,  or  whenever  a  patent  shall  be  be  made  to 
returned  for  correction  and  reissue,  the  specification  of  ip[Jj3"J|c  ^^' 
claim  annexed  to  every  such  patent  shall  be  subject  to 
revision  and  restriction,  in  the  same  manner  as  are  origi- 
nal applications  for  patents ;  the  Commissioner  shall  not 
add  any  such  improvement  to  the  patent  in  the  one  case, 
nor  grant  the  reissue  in  the  other  case,  until  the  applicant 
shall  have  entered  a  disclaimer,  or  altered  his  specifica- 
tion of  claim  in  accordance  with  the  decision  of  the  Com- 
missioner ;  and  in  all  such  cases,  the  applicant,  if  dissatis- 
fied with  such  decision,  shall  have  the  same  remedy,  and 
be  entitled  to  the  benefit  of  the  same  privileges  and  pro- 
ceedings, as  are  provided  by  law  in  the  case  of  original 
applications  for  patents. 

Sec.  9.  And  he  it  further  enacted,  (^"Y  thing  in  the     When,    by 
fifteenth  section  of  the  act,  to  which  this  is  additional,  to  ^^'y^^J^j^'J^^^' 

the   contrary  notwithstanding,)  That  whenever,  by  mis- claims  to  be 

,  .  ,  .       ,  1-1  •!/>  1  tlie      orieinal 

take,  accident,  or  inadvertence,  and  without  any  wilful  inventor      of 

default  or  intent  to  defraud  or  mislead  the  public,  any  P"^    "^  ,  ^^f 

thing   patent- 
patentee  shall  have  in  his  specification  claimed  to  be  the  ed,  of  which 

oiiginal  and  first  inventor  or  discoverer  of  any  material  ^^  ' 

or  substantial  part  of  the  thing  patented,  of  which  he  was 

not   the    first   and    original    inventor,  and  shall  have  no 

legal    or  just    right   to   claim    the  same,   in  every  such 

case    the   patent  shall   be   deemed    good   and  valid   for 


490  LAWS    OF    THE     UNITED    STATES 

SO  much  of  the  invention  or  discovery  as  shall  be  truly 
Proviso.  and  bona  fide  his  own :  Provided^  It  shall  be  a  material 
and  substantial  part  of  the  thing  patented,  and  be  defin- 
itively distinguishable  from  the  other  parts  so  claimed 
without  right  as  aforesaid.  And  every  such  patentee, 
his  executors,  administrators,  and  assigns,  whether  of 
a  whole  or  of  a  sectional  interest  therein,  shall  be 
entitled  to  maintain  a  suit  at  law  or  in  equity  on  such 
patent  for  any  infringement  of  such  part  of  the  invention 
or  discovery  as  shall  be  bona  fide  his  own  as  aforesaid, 
notwithstanding  the  specification  may  embrace  more  than 
he  shall  have  any  legal  right  to  claim.  But  in  every 
such  case  in  which  a  judgment  or  verdict  shall  be  ren- 
dered for  the  plaintiff,  he  shall  not  be  entitled  to  recover 
costs  against  the  defendant,  unless  he  shall  have  entered 
at  the  Patent  Office,  prior  to  the  commencement  of  the 
suit,  a  disclaimer  to  all  that  part  of  the  thing  patented 
Further  pro-  which  was  SO  claimed  without  right :  Provided^  however, 
vise.  That  no  person  bringing  any  such  suit  shall  be  entitled 

to  the  benefits  of  the  provisions  contained  in  this  section, 
who    shall   have    unreasonably  neglected   or  delayed   to 
enter  at  the  Patent  Office  a  disclaimer  as  aforesaid. 
Agents  to  he      Sec.  10.  And   be   it  further  enacted,  That   the  Com- 
receive     and  missioner  is  hereby  authorized  and  empowered  to  appoint 
^r^'^'^  ^°'^'  ^g^"^^  ^^  ^'^^  exceeding  twenty  of  the  principal  cities  or 
towns  in  the  United  States,  as  may  best  accommodate  the 
different   sections    of   the    country,    for   the    purpose    of 
receiving  and   forwarding  to  the  Patent  Office  all  such 
models,  specimens  of  ingredients,  and  manufactures,  as 
shall  be   intended   to   be   patented  or  deposited   therein, 
the  transportation  of  the  same  to  be  chargeable  to  the 
patent  fund. 
Two  exam-      Sec.    11.    And    he   it  further   enacted,    That   instead 
co'py^in^f"  cle?k  ^^  '^^^  examining  clerk,  as  provided  by  the  second  see- 
to  be  appoint-  tion  of  the  act  to  which  this  is  additional,  there  shall  be 
appointed   in   manner  therein    provided,    two    examining 
clerks,  each  to  receive  an  annual  salary  of  fifteen  hundred 
dollars  ;  and,  also,  an  additional  copying   clerk,    at    an 
Temporary  annual   salary  of  eight  hundred  dollars.     And  the  Com- 
employed^   ^  missioner  is  also   authorized   to  employ,  from   time   to 
time,  as  many  temporary  clerks  as  may  be  necessary  to 
execute  the  copying  and  draughting  required  by  the  first 
section   of  this   act,   and   to   examine  and  compare  the 


RELATING  TO  PATENTS,  ETC.  491 

records  with  the  originals,  who  shall  receive  not  exceed- 
ing seven  cents  for  every  page  of  one  hundred  words,  and 
for  drawings  and  comparison  of  records  with  originals, 
such  reasonable  compensation  as  shall  be  agreed  upon  or 
prescribed  by  the  Commissioner. 

Sec.  12.  And  be  it  further  enacted,  That  whenever  Certificate  of 
the   application    of  any   foreigner  for  a    patent  shall  be  sioner  to    be 

rejected  and  withdrawn  for  want  of  novelty  in  the  inven- sufficient  war- 
.  •'  .  "^  rant     to     the 

tion,  pursuant  to  the  seventh  section  of  the  act  to  which  Treasurer. 

this  is  additional,  the  certificate  thereof  of  the  Commis- 
sioner shall  be  a  sufficient  warrant  to  the  Treasurer  to 
pay  back  to  such  applicant  two-thirds  of  the  duty  he 
shall  have  paid  into  the  Treasury  on  account  of  such 
application. 

Sec.  13.  And  be  it  further  enacted,  That  in  all  cases     Affirmation 
in  which  an  oath  is  required  by  this  act,  or  by  the  act  to  s^Uuied  for\n 
which    this    is    additional,    if  the    person    of   whom  it  is  oath, 
required  shall  be  conscientiously  scrupulous  of  taking  an  * 

oath,  affirmation  may  be  substituted  therefor. 

Sec  14.  And  be  it  further  enacted,  That  all  moneys  Moneys  paid 
paid  into  the  Treasury  of  the  United  States  for  patents  1^"^°  ^for^^pat- 
and  for  fees  for  copies  furnished  by  the  Superintendent  pnts,  &c.,  pri- 
of  the  Patent  Office  prior  to  the  passage  of  the  act  of  of  the  act  "to 
which  this  is  additional,  shall  be  carried  to  the  credit  of  ^^I'";^  '^'^  '^ 

'  additional,    to 

the  patent  fund  created  by  said  act;  and  the  moneys  con- be  carried  to 
stituting  said  fund  shall  be,  and  the  same  are  hereby, ""  fyn°j  ^^^'_ 
appropriated  for  the  payment  of  the  salaries  of  the  officers  ^^^^   ''Y,  **aid 

'  *       '^  .        ,  .  act  ;  and  said 

and  clerks  provided  by  said   act,  and   all  other  expenses  fund  appropri- 

of  the  Patent  Office,  including  all   the  expenditures  pro- ^[g'^g  ^^  ^ 

vided  for  by  this  act ;  and,  also,  for  such  other  purposes 

as  are  or  may  be  hereafter,  specially  provided  for  by  law. 

And  the  Commissioner  is  hereby  authorized  to  draw  upon  Commission- 

said  fund,  from   time  to  time,  for  such  sums  as  shall  be  ®'"  authorized 

'  _  '  _  .  _  lo  draw  upon 

necessary  to  carry  into  effect  the  provisions  of  this  act,  the  same,  &e.; 

governed,  however,  by  the  several  limitations  herein  con-  con4ess'^  an^ 

tained.     And  it  shall  be  his  duty  to  lay  before  Congress,  "'Jally  a  state- 

,,,.,,  ment    of    ex- 

m  the  month  of  January,  annually,  a   detailed   statement  pendiiures, 

of  the  expenditures  and  payments  by  him  made  from  said  a  li'sr"of  ^pat- 
fund.     And  it  shall  also  be  his  duty  to  lay  before  Con-  ents,  &c. 
gress,   in  the  month  of  January,  annually,   a  list  of  all 
patents  which  shall  have  been  granted  during  the  preced- 
ing year,  designating,  under   proper  heads,  the  subjects 
of  such  patents,  and  furnishing  an  alphabetical  list  of  the 


492  LAWS    OF    THE    UNITED    STATES 

patentees,  with  their  places  of  residence  ;  and  he  shall 
also  furnish  a  list  of  all  patents  which  shall  have  become 
public  property  during  the  same  period  ;  together  with 
such  other  information  of  the  state  and  condition  of  the 
Patent  Office  as  may  be  useful  to  Congress  or  the  public. 
Approved  March  3d,  1837. 


CHAP.  LXXXVIII.  —  An  Act  in  addition  to  an  "  Act  to  promote  the 
progress  of  the  useful  arts." 

Act  of  July      2?g  {(^  enacted  by  the  Senate  and  House  of  Representa- 

4,  1836,  chap.      .  /•     ,       xr    •       ,    o  r     a  .        .       r^ 

357.  tives  oj  the  United  otat.es  oj  America  tn  Congress  assent- 

29^^842 ^ch"  ^^^^^'  '^^^^^  there  shall  be  appointed,  in  manner  provided 

263.  in  the  second  section   of  the   act  to   which  this  is  addi- 

Two  assist-    ...  ...  , 

ant  examiners  tional,  two  assistant  exammers,  each  to  receive  an  annual 

ed ^how '-Their  ^^^^^y  of  twelve  hundred  and  fifty  dollars. 

salaries.  Sec.  2.  And  he  it  further  enacted.  That  the   Cornmis- 

clerk^!"^"'^^'^^  sioner  be  authorized  to  employ  temporary  clerks  to  do 
Proviso.  g^jjy  necessary  transcribing,  whenever  the  current  busi- 
ness of  the  office  requires  it :  Provided,  however.  That 
instead  of  salary  a  compensation  shall  be  allowed,  at  a 
rate  not  greater  than  is  charged  for  copies  now  furnished 
by  the  office. 
List  of  pat-      Sec.  3.  And  he  it  further  enacted.  That  the  Commis- 

Ushed.  sioner  is   hereby  authorized   to   publish  a  classified  and 

alphabetical  list  of  all  patents  granted  by  the  Patent 
Office  previous  to  said  publication,  and  retain  one  hun- 
dred copies  for  the  Patent  Office,  and  nine  hundred 
copies  to  be  deposited  in  the  library  of  Congress,  for 
such  distribution  as  may  be  hereafter  directed;  and  that 
one  thousand  dollars,  if  necessary,  be  appropriated,  out 
of  the  patent  fund,  to  defray  the  expense  of  the  same. 
Pay  for  use      Sec.  4.  And  be  it  further   enacted.  That  the  sum  of, 

of   rooms   in  j^hi-Qg  thousand    six  hundred    and  fifty-nine    dollars   and 
Oity  Hall.  _  •' 

twenty-two  cents  be,  and   is  hereby,  appropriated  from 

the  patent  fund,  to  pay  for  the  use  and  occupation  of 
rooms  in  the  City  Hall  by  the  Patent  Office. 
Purchase  of  Sec.  5.  And  be  it  further  enacted.  That  the  sum  of 
one  thousand  dollars  be  appropriated  from  the  patent 
fund,  to  be  expended  under  the  direction  of  the  Commis- 
sioner, for  the  purchase  of  necessary  books  for  the 
library  of  the  Patent  Office. 


RELATING    TO    PATENTS,    ETC.  493 

Sec.  6.  And  le  it  further   enacted.   That   no   person      ^'o,  person 

,    -  .    .  „  .  to  be  debarred 

shall  be  debarred  from  receiving  a  patent  for  any  inven- from  receiving 

tion  or  discovery,  as  provided  in  the  act  approved  on  the  ^  P^'^°''  '^*^- 
fourth    day    of  July,  one    thousand    eight   hundred    and 
thirty-six,  to  which  this  is   additional,  by  reason  of  the 
same   having   been  patented  in  a  foreign  country  more 
than  six  months  prior  to  his  application  :  Provided,  That     Proviso, 
the  same  shall  not  have  been  introduced  into  public  and 
common  use  in  the  United  States  prior  to  the  application 
for  such  patent :  And  provided,  also.  That  in  all  cases     Proviso. 
every  such  patent  shall  be  limited  to  the  term  of  fourteen 
years  from  the  date  or  publication  of  such  foreign  letters- 
patent. 

Sec  7.  And  be  it  further  enacted.  That  every  person  Persons,  &c., 

11  1     11    1  11  having      pur- 

er corporation  who  has,  or  shall  have,  purchased  or  con-  chased  or  con- 
structed any  newly  invented    machine,   manufacture,  or  structed    any 
•'  -'  _  _       _  newly  invenl- 

composition   of  matter,   prior  to   the   application   by  the  ed     nriachine, 

inventor  or  discoverer  for  a  patent,  shall  be  held  to  pos- 
sess the  right  to  use,  and  vend  to  others  to  be  used,  the 
specific  machine,  manufacture,  or  composition  of  matter 
so  made  or  purchased,  without  liability  therefor  to  the 
inventor,  or  any  other  person  interested  in  such  inven- 
tion ;  and  no  patent  shall  be  held  to  be  invalid  by  reason 
of  such  purchase,  sale,  or  use,  prior  to  the  application 
for  a  patent  as  aforesaid,  except  on  proof  of  abandonment 
of  such  invention  to  the  public,  or  that  such  purchase, 
sale,  or  prior  use,  has  been  for  more  than  two  years  prior 
to  such  application  for  a  patent. 

Sec  8.  And  le  it  further  enacted.  That  so  much  of  So  much  of 
the  eleventh  section  of  the  above  recited  act  as  requires  jj^j^  4^'^l832'^ 
the    payment  of  three   dollars   to   the   Commissioner  of  chap.  357,  as 

_  /.  1-  •  ^  i  requires    pay- 

Patents  for  recording  any  assignment,  grant,  or  convey- ment   for   re- 

ances  of  the  whole  or  any  part  of  the  interest  or  right  cprdmg      as- 

.  signments,  re- 

under  any  patent,  be,  and  the  same  is  hereby,  repealed  ;  pealed. 

and  all  such  assignments,  grants,  and  conveyance  shall, 

in  future,  be  recorded  without  any  charge  whatever. 

Sec  9.   And   he  it  further   enacted.    That   a   sum  of    Agricultural 

st£itistics  etc 

money,  not  exceeding  one  thousand  dollars,  be,  and  the  ' 

same  is  hereby,  appropriated  out  of  the  patent  fund,  to 
be  expended  by  the  Commissioner  of  Patents  in  the  col- 
lection of  agricultural  statistics,  and  for  other  agricultu- 
ral purposes  ;  for  which  the  said  Commissioner  shall 
account  in  his  next  annual  report. 
42 


494  LAWS    OF    THE    UNITED    STATES 

Provisions  Sec.  10.  And  be  it  further  enacted.  That  the  provi- 
July  4,  1330,  sions  of  the  sixteenth  section  of  the  before  recited  act 
chap  357,  ex- g|^^u  extend  to  all  cases  where  patents  are  refused  for 

tended.  ,  '  .     . 

any  reason  whatever,  either  by  the  Commissioner  of 
Patents  or  by  the  Chief  Justice  of  the  District  of  Colum- 
bia, upon  appeals  from  the  decision  of  said  Commissioner, 
as  well  as  where  the  same  shall  have  been  refused  on 
account  of,  or  by  reason  of,  interference  with  a  pre- 
viously existing  patent ;  and  in  all  cases  where  there  is 
no  opposing  party,  a  copy  of  the  bill  shall  be  served 
upon  the  Commissioner  of  Patents,  when  the  whole  of 
the  expenses  of  the  proceeding  shall  be  paid  by  the  appli- 
cant, whether  the  final  decision  shajl  be  in  his  favor  or 
otherwise. 
Appeals.  Sec.  11.  A7id    he   it  farther   enacted.   That    in    cases 

where  an  appeal  is  now  allowed  by  law  from  the  deci- 
sion of  the  Commissioner  of  Patents  to  a  board  of  exam- 
iners provided  for  in  the  seventh  section  of  the  act  to 
which  this  is  additional,  the  party,  instead  thereof,  shall 
have  a  right  to  appeal  to  the  Chief  Justice  of  the  district 
court  of  the  United  States  for  the  District  of  Columbia, 
by  giving  notice  thereof  to  the  Commissioner,  and  filing 
in  the  Patent  Office,  within  such  time  as  the  Commis- 
sioner shall  appoint,  his  reasons  of  appeal,  specifically 
set  forth  in  writing,  and  also  paying  into  the  Patent 
Office,  to  the  credit  of  the  patent  fund,  the  sum  of 
twenty-five  dollars.  And  it  shall  be  the  duty  of  said 
Chief  Justice,  on  petition,  to  hear  and  determine  all  such 
appeals,  and  to  revise  such  decisions  in  a  summary  way, 
on  the  evidence  produced  before  the  Commissioner,  at 
such  early  and  convenient  time  as  he  may  appoint,  first 
notifying  the  Commissioner  of  the  time  and  place  of 
hearing,  whose  duty  it  shall  be  to  give  notice  thereof  to 
all  parties  who  appear  to  be  interested  therein,  in  such 
manner  as  said  judge  shall  prescribe.  The  Commissioner 
shall  also  lay  before  the  said  judge  all  the  original  papers 
and  evidence  in  the  case,  together  with  the  grounds  of 
his  decision,  fully  set  forth  in  writing,  touching  all  the 
points  involved  by  the  reasons  of  appeal,  to  which  the 
revision  shall  be  confined.  And  at  the  request  of  any 
party  interested,  or  at  the  desire  of  the  judge,  the  Com- 
missioner and  the  examiners  in  the  Patent  Office  may  be 
examined  under  oath,  in  explanation  of  the  principles  of 


RELATING  TO  PATENTS,  ETC. 


495 


the  machine  or  other  thing  for  which  a  patent,  in  such 
case,  is  prayed  for.  And  it  shall  be  the  duty  of  the  said 
judge,  after  a  hearing  of  any  such  case,  to  return  all  the 
papers  to  the  Commissioner,  with  a  certificate  of  his 
proceedmgs  and  decision,  which  shall  be  entered  of 
record  in  the  Patent  Oflice  ;  and  such  decision,  so  certi- 
fied, shall  govern  the  further  proceedings  of  the  Com- 
missioner in  such  case :  Provided,  hoivever,  That  no  opin-  Proviso, 
ion  or  decision  of  the  judge  in  any  such  case  shall 
preclude  any  person  interested  in  favor  or  against  the 
validity  of  any  patent  which  has  been,  or  may  hereafter 
be,  granted,  from  the  right  to  contest  the  same  in  any 
judicial  court,  in  any  action  in  which  its  validity  may 
come  in  question. 

Sec  12.  And  he  it  further  enacted,  Tliat  the  Commis-  Commission- 
sioner  of  Patents  shall  have  power  to  make  all  such  regulations  re- 
regulations   in   respect  to   the   taking  of  evidence   to  be  si'ecting  con- 

»  r  o  _  tested  cases. 

used  in  contested  cases  before  him,  as  may  be  just  and 
reasonable.  And  so  much  of  the  act  to  which  this  is  ad- 
ditional, as  provides  for  a  board  of  examiners,  is  hereby 
repealed. 

Sec  13.  And  be  it  further  enacted,  That  there  be  paid  Compensation 

.     ,  ^1  1  •  T     rM  •    r    T         of  Chief  Jus- 

annually,  out  of  the  patent  fund,  to  the  said   Chief  Jus-tice. 
tice,  in  consideration  of  the  duties  herein  imposed,  the 
sum  of  one  hundred  dollars. 
Approved  March  3,  1839. 


CHAP.  CCLXIII.  —  An  Act  in  addition  to  an  act  to  proniole  the  pro- 
gress of  the  useful  arts,  and  to  repeal  all  acts  and  parts  of  acts  here- 
tofore made  for  that  purpose. 

Be  it  enacted  by  the  Senate  and  House  of  Representa-     -^^^  "f  ^"ly 

.  -^  4,  1836,  chap. 

lives  of  the  United  States  of  America  tn  Congress  assem-  357. 

bled,  That  the  Treasurer  of  the  United  States  be,  and  he  .^^^.f,^^^. 

hereby  is,  authorized  to  pay  back,  out  of  the  patent  fund,  45. 

r.  1        1     II  .  Act  of  Mar. 

any  sum  or  sums  of  money,  to  any  person  who  shall  have  3.  1339,  chap. 

paid  the  same  into  the  Treasury,  or  to  any  receiver  or*^''- 

depository  to  the  credit  of  the  Treasurer,  as  for  fees  ac-  antho'dzeT'^to 

cruing  at  the  Patent  Office  through  mistake,  and  which  pay  back,  out 

•  1     1  1  •  1    1  ■     •         1  -n  'if  ihe   patent 

are  not  provided  to  be  paid  by  existing  laws,  certificate  fund,   certain 
thereof  being  made  to  said  Treasurer  by  the  Commis- 'y°"^y  P"^ ''** 

°  ■'  lees. 

sioner  of  Patents. 


496 


LAWS     OF    THE    UNITED    STATES 


Sec.  3,  act  of 
Mar.  3,  1837, 
chap.  43,  ex- 
tended to  pat- 
ents granted 
prior  to  loth 
Dec'r,  1S36, 
though  lost 
subsequently. 

Proviso. 


Citizens,  &c., 
may  obtain  a 
patent  ;  how. 


Proviso. 


Sec.  2.  And  be  it  further  enacted.  That  the  third  sec- 
tion of  the  act  of  March,  eighteen  hundred  and  thirty- 
seven,  which  authorizes  the  renewing  of  patents  lost  prior 
to  the  fifteenth  of  December,  eighteen  hundred  and  thirty- 
six,  is  extended  to  patents  granted  prior  to  said  fifteenth 
day  of  December,  though  they  may  have  been  lost  sub- 
sequently :  Provided,  however.  The  same  shall  not  have 
been  recorded  anew  under  the  provisions  of  said  act. 

Sec  3.  And  he  it  further  enacted.  That  any  citizen  or 
citizens,  or  alien  or  aliens,  having  resided  one  year  in 
the  United  States,  and  taken  the  oath  of  his  or  their  in- 
tention to  become  a  citizen  or  citizens,  who  by  his,  her, 
or  their  own  industry,  genius,  efforts,  and  expense,  may 
have  invented  or  produced  any  new  and  original  design 
for  a  manufacture,  whether  of  metal  or  other  material  or 
materials,  or  any  new  and  original  design  for  the  print- 
ing of  woollen,  silk,  cotton,  or  other  fabrics,  or  any  new 
and  original  design  for  a  bust,  statue,  or  bas  relief  or 
composition  in  alto  or  basso  relievo,  or  any  new  and  ori- 
ginal impression  or  ornament,  or  to  be  placed  on  any  ar- 
ticle of  manufacture,  the  same  being  formed  in  marble  or 
other  material,  or  any  new  and  useful  pattern,  or  print, 
or  picture,  to  be  either  worked  into  or  worked  on,  or 
printed  or  painted,  or  cast,  or  otherwise  fixed  on,  any 
article  of  manufacture,  or  any  new  and  original  shape  or 
configuration  of  any  article  of  manufacture  not  known  or 
used  by  others  before  his,  her,  or  their  invention  or  pro- 
duction thereof,  and  prior  to  the  time  of  his,  her,  or 
their  application  for  a  patent  therefor,  and  who  shall  de- 
sire to  obtain  an  exclusive  property  or  right  therein  to 
make,  use,  and  sell,  and  vend  the  same,  or  copies  of  the 
same,  to  others,  by  them  to  be  made,  used,  and  sold,  may 
make  application,  in  writing,  to  the  Commissioner  of 
Patents,  expressing  such  desire,  and  the  Commissioner, 
on  due  proceeding  had,  may  grant  a  patent  therefor,  as 
in  the  case  now  of  application  for  a  patent :  Provided, 
That  the  fee  in  such  cases,  which  by  the  now  existing 
laws  would  be  required  of  the  particular  applicant,  shall 
be  one-half  the  sum,  and  that  the  duration  of  said  patent 
shall  be  seven  years,  and  that  all  the  regulations  and 
provisions  which  now  apply  to  the  obtaining  or  protec- 
tion of  patents  not  inconsistent  with  the  provisions  of 
this  act,  shall  apply  to  applications  under  this  section. 


RELATING  TO  PATENTS,  ETC.  497 

Sec.  4.  And  he  it  further  enacted^  That  the  oath  re-  Oath  may  be 
quired  for  applicants  for  patents  may  be  taken,  when  the  y  ^g    niinis- 
applicant  is  not,  for  the  time  being,  residing  in  the  United  ^^rs,  &c. 
States,    before    any    minister,    phenipotentiary,    charge 
d'affaires,  consul,  or  commercial  agent  holding  commis- 
sion under  the  government  of  the  United  States,  or  before 
any  notary  public  of  the  foreign  country  in  which  such 
applicant  may  be. 

Sec.  5.  And  he  it  further  enacted,  That  if  any  person     Penalty  for 

1     11         •    i  •    i  I J  i  infrinffinar  the 

or  persons  shall  pamt  or  pnnt,  or  mould,  cast,  carve,  or  fj^mg^^ja  pa- 
engrave,  or  stamp,  upon  any  thing  made,  used,  or  sold '^ntee,  &c.,by 
by  him,  for  the  sole  making  or  selling  which  he  hath  not, 
or  shall  not  have  obtained  letters-patent,  the  name  or 
any  imitation  of  the  name  of  any  other  person  who  hath 
or  shall  have  obtained  letters-patent  for  the  sole  making 
and  vending  of  such  thing,  without  consent  of  such 
patentee,  or  his  assigns  or  legal  representatives  ;  or  if 
any  person,  upon  any  such  thing  not  having  been  pur- 
chased from  the  patentee,  or  some  person  who  purchased 
it  from  or  under  such  patentee,  or  not  having  the  license 
or  consent  of  such  patentee,  or  his  assigns  or  legal  rep- 
resentatives, shall  write,  paint,  print,  mould,  cast,  carve, 
engrave,  stamp,  or  otherwise  make  or  affix  the  word 
"  patent,"  or  the  words  "  letters-patent,"  or  the  word 
"  patentee,"  or  any  word  or  words  of  like  kind,  meaning, 
or  import,  with  the  view  or  intent  of  imitating  or  coun- 
terfeiting the  stamp,  mark,  or  other  device  of  the  paten- 
tee, or  shall  affix  the  same,  or  any  word,  stamp,  or 
device  of  like  import,  on  any  unpatented  article  for  the 
purpose  of  deceiving  the  public,  he,  she,  or  they,  so  of- 
fending, shall  be  liable  for  such  offence  to  a  penalty  of 
not  less  than  one  hundred  dollars,  with  costs,  to  be  re- 
covered by  action  in  any  of  the  circuit  courts  of  the 
TT-ii^  ■  fij--  f     ^  How  recov- 

Umted   btates,  or  in   any   of  the   district  courts   of    the  erable,  &c. 

United  States  having  the  powers  and  jurisdiction  of  a 
circuit  court ;  one-half  of  which  penalty,  as  recovered, 
shall  be  paid  to  the  patent  fund,  and  the  other  half  to  any 
person  or  persons  who  shall  sue  for  the  same. 

Sec.  6.  A^id  he  it  further  enacted,  That  all  patentees      Patentees, 
and  assignees  of  patents  hereafter  granted,  are   hereby  to*^ma7l^"arti- 
required  to  stamp,  engrave,  or  cause  to  be  stamped  or  des  offered  for 
engraved,  on  each  article  vended  or  offered  for  sale,  the 
date  of  the  patent ;  and  if  any  person  or  persons,  paten- 
42* 


498  LAWS    OF    THE    UNITED     STATES 

Penalty  for  tees  or  assignees,  shall  neglect  to  do  so,  he,  she,  or  they 
neg  ect.  shall  be  liable  to  the  same  penalty,  to  be  recovered  and 

disposed  of  in  the  manner  specified  in  the  foregoing  fifth 
section  of  this  act. 

Approved  Axigust  29,  1842. 


CHAP.  XLVII.  —  An  Act  to  provide  additional  examiners  in  the  Pa- 
tent Office,  and  for  other  purposes. 

May  28, 1848.  Be  it  enacted  by  the  Senate  and  House  of  Representa- 
tives of  the  United  States  of  America  in  Congress  assem- 
bled, That  there  shall  be  appointed,  in  the  manner  pro- 
vided in  the  second  section  of  the  act  entitled  "  An  Act 
to  promote  the  progress  of  useful  arts,  and  to  repeal  all 
acts  and  parts  of  acts  heretofore  made  for  that  purpose," 
approved  July   fourth,   eighteen  hundred   and  thirty-six, 

1836,  ch.  357.  ^^^Q  principal  examiners,  and  two  assistant  examiners,  in 

Additional  ex-  .  .  . 

aminers  in  the  addition  to  the  number  of  examiners  now  employed  in 
ce.  ^^^  Patent  Office  ;  and  that  hereafter  each  of  the  princi- 
pal examiners  employed  in  the  Patent  Office  shall  re- 
Salaries,  ceive  an  annual  salary  of  twenty-five  hundred  dollars, 
and  each  of  the  assistant  examiners  an  annual  salary  of 
Extension  of  ^^'^^^'^  hundred  dollars  :  Provided,  That  the  power  to  ex- 
patents,  tend  patents,  now  vested  in  the  board  composed  of  the 
Secretary  of  State,  Commissioner  of  Patents,  and  So- 
licitor of  the  Treasury,  by  the  eighteenth  section  of  the 
act  approved  July  fourth,  eighteen  hundred  and  thirty- 
six,  respecting  the  Patent  Office,  shall  hereafter  be  vested 
solely  in  the  Commissioner  of  Patents  ;  and  when  an  ap- 
plication is  made  to  him  for  the  extension  of  a  patent 
according  to  said  eighteenth  section,  and  sixty  days'  no- 
tice given  thereof,  he  shall  refer  the  case  to  the  princi- 
pal examiner  having  charge  of  the  class  of  inventions  to 
which  said  case  belongs,  who  shall  make  a  full  report  to 
said  Commissioner  of  the  said  case,  and  particularly 
whether  the  invention  or  improvement  secured  in  the 
patent  was  new  and  patentable  when  patented ;  and 
thereupon  the  said  Commissioner  shall  grant  or  refuse 
the  extension  of  said  patent,  upon  the  same  principles  and 
rules  that  have  governed  said  board ;  but  no  patent  shall 
be  extended  for  a  longer  term  than  seven  years. 


RELATING     TO     PATENTS,     ETC.  499 

Sec.  2.  And  be  it  further  enacted,  That  hereafter  the     Fee  for  re- 
Commissioner  of  Patents  shall  require  a  fee  of  one  dol-  veyanc^es  "^"of 
lar  for  recording  any  assignment,  grant  or  conveyance,  patents. 
of  the  whole  or  any  part  of  the  interest  in  letters-patent, 
or   power   of  attorney,  or   license  to   make  or  use  the 
things  patented,  when  such  instrument  shall  not  exceed 
three    hundred    words ;    the    sum    of   two    dollars    when 
it  shall  exceed  three  hundred  and  shall  not  exceed  one 
thousand  words ;  and  the  sum  of  three  dollars  when  it 
shall  exceed  one  thousand  words  ;  which  fees  shall  in  all 
cases  be  paid  in  advance. 

Sec.  3.  And  be  it  further  enacted.  That  there  shall  be  Two  copying 
appointed  in  manner  aforesaid  two  clerks,  to  be  employed  eierks  author- 
in  copying  and  recording,  and  in  other  services  in  the  '^^'^• 
Patent  Office,  who  shall  be  paid  a  salary  of  one  thousand 
two  hundred  dollars  per  annum. 

Sec.  4.  And  be  it  further  enacted,  That  the  Commis-  Franking  pri- 
sioner  of  Patents  is  hereby   authorized   to  send   by  mail,  ,T,issioner    of 
free  of  postage,  the  annual  reports  of  the  Patent  Office,  Patents. 
in  the  same  manner  in  which  he  is  empowered  to  send 
letters  and  packages  relating  to  the  business  of  the  Patent 
Office. 

Approved  May  27,  1848. 


DECISIONS 


HON.     JUDGE     CRANCH, 


IN    CASES     OF 


APPEAL  FROM  THE  COMMISSIONER   OF  PATENTS. 


Note.  —  The  following  decisions  of  Judge  Cranch,  in  cases  of  appeal 
from  ihe  Commissioner  of  Patents,  are  reprinted  here  for  the  convenience  of 
the  profession  and  of  persons  interested  in  applications  at  the  Patent  Office, 
but  without  intending  to  express  any  assent  or  dissent,  with  regard  to  the 
doctrines  contained  in  them.  The  decisions  were  not  received  in  season  for 
a  careful  and  deliberate  examination,  and  are,  therefore,  not  referred  to  in  the 
body  of  this  work.  g.  t.  c. 

Boston,  April  10th,  1849. 


Kemper's  Case. 

The  petition  of  John  F.  Kemper  sets  forth  that  he  "  has  invented 
certain  improvements  in  the  manner  of  constructing  vessels  for  the 
stowing  and  carrying  ice  ;  and  also  an  improvement  in  the  manner  of 
stowing  the  same,  and  prays  that  letters-patent  of  the  United  Siales 
may  be  granted  to  him  therefor,  securing  to  him  and  his  legal  repre- 
sentatives an  exclusive  right  in  and  to  his  said  invention,  agreeably 
to  the  provisions  of  the  acts  of  Congress  in  that  case  made  and  pro- 
vided ;  he  having  paid  thirty  dollars  into  the  treasury  of  the  United 
States,  and  otherwise  complied  with  the  requirements  of  the  said 
acts." 

In  his  specification,  after  describing  his  vessel  and  the  improve- 
ments in  the  same,  and  certain  matters  to  be  attended  to  in  the  stow- 
ing of  the  ice,  he  says  : 


JUDGE    CRANCH's    DECISIONS.  501 

"  I  have  discovered  that,  for  the  purpose  of  keeping  ice  for  a  great 
length  of  time,  it  is  necessary,  in  stowing  it,  to  place  all  the  pieces 
edgewise,  as,  when  placed  flatwise,  small  openings  are  formed 
through  it  by  the  percolation  of  water  or  otherwise,  and  that  the  inju- 
rious effect  goes  on  increasing  and  eventually  producing  a  rapid 
destruction  thereof:  this  I  obviate,  by  carefully  packing  all  the 
blocks  edgewise,  when,  as  experience  has  abundantly  shown,  no 
such  effect  is  produced.  This  mode  of  stowing  applies  not  only  to 
vessels,  but  also  to  ice  houses,  and  wherever  ice  is  to  be  preserved." 

After  stating  what  he  disclaims  and  what  he  claims  as  his  inven- 
tion and  improvements  in  constructing  vessels  for  the  transportation 
of  ice,  he  says  : 

"  In  the  manner  of  stowing  the  ice,  I  claim  the  placing  of  the  pre- 
pared blocks  edgewise,  in  the  manner  and  for  the  beneficial  purpose 
herein  set  forth." 

No  objection  was  made  by  the  Commissioner  of  Patents  to  the 
grant  of  a  patent  for  the  novel  construction  of  vessels  for  the  trans- 
portation of  ice  as  claimed  by  him  ;  but  the  Commissioner  decided 
that  the  applicant  was  not  entitled  to  receive  a  patent  for  the  manner 
of  stowing  the  ice  by  placing  the  blocks  edgewise. 

From  this  decision  he  has  appealed,  according  to  the  provisions  of 
the  11th  section  of  the  act  of  March  3,  1839,  and  the  7th  section  of 
the  act  of  July  4,  1836  ;  and  has  filed  in  the  Patent  Office  his  reasons 
of  appeal,  and  paid  the  sum  of  twenty-five  dollars  to  the  credit  of 
the  patent  fund. 

By  the  11th  section  of  the  act  of  March  3,  1839,  ch.  88,  (pamphlet 
edition,)  the  judge  is  to  confine  his  revision  to  the  points  involved  in 
the  reasons  of  appeal^  and  the  Commissioner  of  Patents  is  to  lay 
before  the  judge  the  grounds  of  his  decision  touching  the  same 
points. 

The  applicant  claims  a  patent  for  his  vessel,  and  his  manner  of 
stowing  ice  in  vessels  and  ice  houses,  as  one  invention,  and  pays 
thirty  dollars  as  for  one  patent. 

The  Commissioner  denies  his  right  to  a  patent  for  his  manner  of 
stowing,  but  admits  it  for  his  improvement  in  the  construction  of  his 
vessel. 

The  first  and  principal  point  involved  in  the  reasons  of  appeal  is, 
whether  the  thing  for  which  the  patent  is  claimed  is  the  invention  or 
discovery  of  a  new  and  useful  art,  or  of  a  new  improvement  on  an 
afft,  within  the  meaning  of  the  constitution  and  laws  of  the  United 
States  respecting  patents. 


502  JUDGE  cranch's  decisions. 

The  invention,  if  it  be  one,  consists  only  in  laying  each  block  of 
ice  on  its  narrowest  side.  Can  that  act  bo  considered  as  a  new  thing 
invented  or  made  ?  Was  it  never  done  before  ?  If  it  has  been  done 
before,  although  the  heneficial  effect  of  so  placing  it,  rather  than  on 
its  broadest  side,  had  not  been  discovered,  it  is  not  a  new  thing. 
The  only  thing  new  is  the  discovery  of  the  beneficial  effect,  and  that 
is  the  discovery  of  a  thing  which  existed  before  ;  for  if  it  is  now 
true  that  ice  so  placed  keeps  longer  than  when  differently  placed, 
it  was  always  true  ;  and  that  it  existed  before  is  shown  in  the 
specification,  where  it  is  said  that  the  effect  was  discovered  by 
experience. 

Much  of  the  confusion  of  ideas  upon  this  subject  has  arisen  from 
the  ambiguity  of  the  words  "  discover  "  and  "  discovery,''''  used  in  the 
constitution  and  the  patent  laws  of  the  United  States.  In  their  pri- 
mary and  common  sense  they  are  not  synonymous  with  "  invent " 
and  "  invention.'''' 

Mr.  Webster,  in  the  last  8vo.  edition  of  his  dictionary,  under  word 
"  discover,''''  says  :  "  discover  differs  from  invent ;  the  discover  what 
before  existed ;  the  invent  what  did  not  before  exist.''"'  And  under  the 
article  "  invention,''"'  he  says  :  "  invention  differs  from  discovery." 
"  Invention  is  applied  to  the  contrivance  and  production  of  something 
that  did  not  before  exist.  '  Discovery  '  brings  to  light  that  which 
existed  before,  but  which  was  not  known." 

A  discovery,  in  this  sense,  is  not  the  subject  of  a  patent ;  and  it 
will  be  found,  by  a  careful  perusal  of  the  constitution  and  laws  of  the 
United  States  upon  the  subject  of  patents  for  useful  arts,  &c.,  that  it 
is  not  there  used  in  this  sense,  but  always  as  synonymous  with 
invent  io7i. 

Thus  the  constitution,  (in  ch.  4,  art.  1,  sec.  8,  clause  8,)  among 
the  enumerated  powers  given  to  Congress,  says  :  "  To  promote  the 
progress  of  science  and  useful  arts,  by  securing  for  limited  terms  to 
authors  and  inventors  the  exclusive  right  to  their  respective  writings 
and  discoveries." 

Here  it  is  evident,  that  the  "  discoveries,'"'  the  use  of  which  is  to 
be  secured,  are  the  discoveries  of  inventors  only.  The  applicant 
must  invent,  contrive,  or  produce  something  that  did  not  exist  before. 
A  man  may  discover  (i.  e.  may  disclose)  his  invention  ;  and  for  that 
discovery  or  disclosure  he  will  be  entitled  to  the  exclusive  use  of  his 
invention  for  a  limited  time. 

In  the  first  act  of  Congress,  "  to  promote  the  progress  of  useful 


JUDGE    CRANCH's    DECISIONS.  503 

arts,"  passed  April  10,  1790,  the  words  invention  and  discovery 
are  used  synonymously  throughout  the  whole  act ;  and  whether 
application  was  for  a  patent,  for  an  invention,  or  a  discovery,  it  must 
be  founded  upon  an  invention  or  discovery  of  an  useful  art,  &c., 
(or  improvement  therein,)  not  before  known  or  used.  The  dis- 
covery of  a  new  art  that  will  justify  a  patent  under  that  act  can  be 
only  the  invention  of  a  new  art,  and  the  discovery  of  a  new  im- 
provement, the  invention  of  a  new  improvement.  In  every  case, 
therefore,  the  applicant  must  be  the  inventor,  and  by  the  constitution 
none  but  inventors  could  be  entitled  to  the  monopoly. 

The  next  act  was  passed  on  the  21st  of  February,  1793,  entitled 
"  an  act  to  promote  the  progress  of  useful  arts,  and  to  repeal  the  act 
heretofore  made  for  that  purpose." 

By  the  first  section  of  this  act,  the  applicant  was  to  declare  that 
he  had  invented  (not  discovered)  a  new  and  useful  art,  &c.,  or  im- 
provement, &c.,  and  the  patent  was  to  give  a  short  description  of 
the  said  invention  or  discovery.  Here  "  discovery  "  is  intended  to 
be  synonymous  with  invention,  for  the  claimant  had  alleged  an 
invention  only  ;  and  it  is  afterwards  again  in  the  same  section  called, 
the  said  invention  or  discovery.  The  second  section  says,  that  any 
person  who  shall  have  discovered  an  improvement  and  obtained  a 
patent  therefor,  shall  not  be  at  liberty  to  use  the  "  original  dis- 
covery, nor  shall  the  first  inventor"  (i.  e.  of  the  original  discovery 
which  he  had  alleged  to  be  his  invention)  "  be  at  liberty  to  use  the 
improvement ; "  and  the  change  of  form  or  properties  was  not  to  be 
deemed  a  "  discovery.''''  By  the  third  section,  "  every  inventor  was 
to  swear  or  affirm  that  he  believed  that  he  was  the  true  inventor  or 
discoverer  of  the  art,  &c."  and  deliver  a  written  description  of  his 
"  invention,  by  which  it  may  be  distinguished  from  other  inven- 
tions."" 

The  fourth  and  fifth  sections  speak  of  inventors  and  inventions, 
without  saying  any  thing  of  discoverers  or  discoveries.  The  sixth 
section,  alluding  to  the  same  invention,  calls  it  "  his  discovery,'''' 
and  speaks  of  original  discovery  and  supposed  discovery,  and  the 
discovery  of  another  man,  and  all  these  expressions  are  used  in 
reference  to  what  had  been  patented  as  inventions.  The  tenth  sec- 
tion speaks  of  the  true  inventor  or  discoverer,  and  the  eleventh  sec- 
tion provides  that  every  inventor  shall  pay  thirty  dollars  before  he 
presents  his  petition. 

The  act  of  17th  of  April,  1800,  only  extends  the  privileges  of  the 


504  JUDGE    CRANCn's    DECISIONS. 

former  act  to  aliens,  and  to  the  legal  representatives  of  inventory 
and  discoverers,  &c.,  and  gives'  treble  damages  for  violation  of  patent 
rights. 

The  act  of  July  13,  1832,  applies  only  to  aliens. 

The  next  act  is  that  of  July  4,  183G,  entitled  "  an  act  to  promote 
the  progress  of  useful  arts,  and  to  repeal  all  acts  and  parts  of  acts 
heretofore  made  for  that  purpose." 

The  first  section  speaks  of  "  issuing  patents  for  new  and  useful 
discoveries.,  inventions,  and  improvements  as  part  of  the  business  of 
the  Commissioner  of  Patents,  whose  office  was  therein  created. 

In  the  5th  section  the  words  invention  and  discovery  are  used 
throughout  as  synonymous. 

The  6th  section,  which  declares  for  what  a  patent  may  issue, 
shows  that  the  applicant  must  have  "  discovered  or  invented "  some 
new  art,  &c.,  or  improvement,  and  it  is  called  "his  discovery  or 
invention  thereof,"  and  he  is  called  the  inventor  or  discoverer.  It 
then  says  :  "  But  before  any  inventor  shall  receive  a  patent  for  any 
such  new  invention  or  discovery,  he  shall  deliver  a  written  descrip- 
tion of  his  invention  or  discover y^  The  descriptions  and  drawings 
are  to  be  "signed  by  the  inventor,'"'  and  he  is  to  furnish  a  model  of 
"  his  invention,''''  and  he  is  to  make  oath  "  that  he  does  verily  believe 
that  he  is  the  original  and  first  inventor  or  discoverer  of  the  art,  &c., 
or  improvement,  for  which  he  solicits  a  patent ;  and  that  he  does  not 
know  or  believe  that  the  same  was  ever  before  known  or  used." 

In  the  7th  section,  wherever  the  word  discovery  or  discoverer  is 
coupled  with  invention  or  inventor,  it  is  evident  that  it  means  the 
discovery  or  discoverer  of  something  neio — something  that  did  not 
exist  before  —  and,  therefore,  equivalent  to  invention  and  inventor. 
In  the  latter  part  of  the  section  it  speaks  of  the  "  science  to  which 
the  alleged  invention  appertains  ; "  and  of  the  part  or  parts  of  the 
invention  which  he  (the  Commissioner)  considers  as  not  entitled  to  be 
patented. 

The  8th  •  section  speaks  of  the  right  of  "  an  original  and  true 
inventor''''  to  a  patent  for  his  invention,  and  says  nothing  of  a  dis- 
covery or  discoverer. 

The  12th  section  speaks  only  of  invention,  not  discovery ;  yet  it 
is  evidently  applicable  to  the  former  sections,  which  use  the  words 
'■'■  invention /)r  discovery.'''' 

The  13th  section  provides  that  where  a  patent  shall  be  "  invalid 
by  reason  of  the  patentee  claiming  in  his  specification,  as  his  own 


JUDGE    CRANCh's    DECISIONS.  505 

invention,  more  than  he  had  a  right  to  claim  as  new,''''  the  Commis- 
sioner "  may  cause  a  new  patent  to  be  issued  to  tlie  said  inventor 
for  the  same  invention,"  &c.  The  same  section  afterwards  speaks 
of  a  "  description  and  specification  of  any  new  improvement  of  the 
original  invention  or  discovery  which  shall  have  been  invented  or 
discovered  by  him''''  (the  patentee)  "subsequent  to  the  date  of  his 
patent. 

The  15th  section  specifies  the  special  matter  which  may  be  given 
in  evidence  by  the  defendant  under  the  general  issue,  among  which 
is  evidence  tending  to  prove  that  the  description  and  specification 
filed  by  the  plaintifl'  does  not  contain  the  whole  truth  relative  to 
his  invention  or  discovery,  or  that  the  patentee  was  not  the  original 
and  first  inventor  or  discoverer  of  the  thing  patented,  or  of  a  sub- 
stantial and  material  part  thereof  claimed  as  new  ;  or  that  he  had 
surreptitiously  or  unjustly  obtained  the  patent  for  that  which  was, 
in  fact,  invented  or  discovered  by  another.  It  also  speaks  of  "  the 
invention  or  discovery  for  which  the  patent  issued."  It  speaks  also 
of  the  first  inventor,  without  adding  discoverer,  and  of  the  invention, 
without  adding  discover?/. 

The  16lh  section  speaks  of  the  inventions  patented,  and  generally 
of  inventions,  without  adding  discoveries. 

The  19th  section  speaks  of  injunctions  to  prevent  the  violation 
of  the  rights  of  any  inventor,  but  says  nothing  of  any  discoverer, 
showing  that  the  word  inventor  included  all  such  discoverers  as 
were  contemplated  by  the  legislature  as  within  the  protection  of  the 
patent  laws. 

The  18lh  section  provides  "  that  whenever  the  patentee  of  an  in- 
vention or  discovery  shall  desire  to  extend  his  patent  beyond  the 
term  of  its  limitation,  he  may  make  application,"  &c.,  and  shall 
"  furnish  a  statement  of  the  ascertained  value  of  the  invention  ;  "  and 
having  failed  to  obtain  from  the  use  and  sale  of  his  invention  a  rea- 
sonable remuneration,  &c.,  he  may  have  the  term  extended.  Here 
it  is  evident  that  the  word  invention  was  understood  as  equivalent 
to  "  invention  and  discovery,''''  mentioned  in  the  beginning  of  the 
section  ;  and  shows  that  the  discovery  contemplated  was  the  discovery 
of  something  new,  i.  e.  that  did  not  exist  before,  and  was  used  as 
synonymous  with  the  word  invention. 

The  remaining  sections  of  the  act  do  not  use  the  words  invention 
or  discovery. 

The  act  of  March  3,  1839,  (pamphlet,  oh.  88,  p.  74,)  section  7, 
43 


506  JUDGE     CRANCH  S     DECISIONS. 

aays  that  every  person  who  shall  have  constructed  any  "  newly  in- 
vented machine,  manufacture  or  composition  of  matter,  prior  to  the 
application  by  the  inventor  or  discoverer  for  a  patent,  shall  be  held 
to  possess  the  right  to  use,"  &c.,  "  the  specific  machine,"  &c.,  "  so 
made,"  &.C.,  "  without  liability  therefor  to  the  inventor  or  any  other 
person  interested  in  such  invention  ;  and  no  patent  shall  be  held  to 
be  invalid  by  reason  of  such  use,"  &c.,  "  except  on  proof  of  aban- 
donment of  such  invention  to  the  public,"  &c. 

There  is  nothing  further  in  this  act  tending  to  explain  the  meaning 
of  the  word  "  discovery,"  as  used  in  the  constitution  and  laws  of  the 
United  States  respecting  patents  for  useful  arts. 

Upon  consideration  of  the  constitution  and  laws  of  the  United 
States  upon  this  subject,  therefore  I  think  I  may  safely  say  that  the 
claimant  in  this  case  can  build  no  argument  upon  the  supposed  def- 
erence between  a  discovery  and  an  invention,  for  no  discovery  will 
entitle  the  discoverer  to  a  patent  which  does  not  in  effect  amount  to 
the  contrivance  or  production  of  something  which  did  not  exist  before ; 
or,  in  other  words,  to  an  invention. 

The  patent  claimed  is  for  "  the  placing  of  the  prepared  blocks 
edgexoise,''''  for  the  purpose  set  forth  in  the  specification. 

The  placing  of  the  blocks  of  ice  edgewise  is  not  the  contrivance 
or  production  of  any  thing  which  did  not  exist  before.  It  is  not  an 
invention.  It  is  not  a  discovery,  because  everybody  knew  before 
that  blocks  of  ice  might  be  placed  upon  their  narrowest  side ;  and 
it  is  asserted  by  the  Commissioner  in  the  grounds  of  his  decision,  and 
not  denied  in  argument,  that  blocks  of  ice  have  been  so  placed, 
whether  by  accident  or  design  is  immaterial  —  the  placing  is  not  new. 
It  is  not  an  invention. 

The  discovery  of  a  new  effect  of  that  which  existed  before  is  not 
the  subject  of  a  patent.  Blocks  of  ice  have  been  placed  on  edge 
before  the  alleged  discovery  by  the  claimant.  If  they  were  so 
placed  with  intent  to  retard  their  dissolution,  I  presume  the  claim- 
ant would  at  once  abandon  his  claim.  But  the  intent  can  be  no 
ground  of  a  patent.  The  claimant  may  be  the  first  who  placed 
blocks  of  ice  on  edge  with  that  intent.,  but  this  cannot  justify  a  patent 
for  doing  that  which  was  often  done  without  that  intent. 

In  truth,  the  whole  merit  of  the  claimant  is  the  discovery  of  a 
fact  which  existed  long  before,  viz :  that  ice  placed  edgewise  kept 
longer  than  when  placed  flatwise.  This  is  a  mere  naked  discovery., 
for  which  a  patent  cannot  be  granted.  There  is  no  invention  — 
nothing  contrived  or  produced  —  which  did  not  exist  before. 


JUDGE     CRANCh's     DECISIONS.  507 

It  is,  however,  contended  that,  although  the  discovery,  merely 
as  such,  is  not  patentable,  and  although  blocks  of  ice  may  have 
been  often  placed  edgewise,  yet  "  it  will  not  be  pretended  that,  in 
vessels  or  in  ice  houses,  ice  had  ever  been  stowed  away  upon  the 
system  adopted  by  Mr.  Kemper."  By  "  system^''''  I  suppose,  must 
here  be  meant  intent  or  purpose,  for  the  placing  the  ice  on  edge 
cannot,  of  itself,  form  a  system.  A  system,  as  defined  by  Dr. 
Johnson,  is  "  any  complexure  or  combination  of  many  things  acting 
together  ;  a  scheme  which  reduces  many  things  to  regular  depend- 
ence or  cooperation  ;  a  scheme  which  unites   many  things  in  order." 

The  patent,  in  the  present  case,  is  not  asked  for  a  system,  but 
for  the  exclusive  right  to  place  blocks  of  ice  on  their  narrowest 
side.  The  claim,  therefore,  obtains  no  support  by  calling  it  a  sys- 
tem, nor  by  calling  it  a  ^'■plan,''''  as  in  the  reasons  of  appeal,  where 
it  is  asked,  "  Is  the  proposed  plan  unquestionably  old."  What  the 
writer  meant  by  the  word  jjlan  is  not  very  obvious ;  but  I  presume 
he  intended  to  refer  to  the  placing  of  the  ice  edgewise,  xcith  the 
intent  that  it  should  thereby  keep  longer  than  if  otherwise  placed. 
He  probably  meant  to  include  the  intent  with  the  act  ;  but,  as  before 
observed,  if  the  thing  done  be  not  new,  the  intent  cannot  entitle  it  to 
a  patent. 

It  is  admitted,  in  argument  in  behalf  of  the  appellant,  "  that  a 
discovery,  taken  abstractedly,  is  not  patentable  ;"  but  it  is  con- 
tended "that,  if  the  thing  discovered  be  practically  applied  to  pro- 
duce a  new  and  useful  effect,  the  manner  of  attaining  the  end  is 
patentable."  Now,  let  us  apply  this  rule  or  doctrine  to  the  present 
case.  The  thing  discovered  is  the  beneficial  effect  of  the  position 
of  the  ice  —  not  the  position  itself.  How  is  this  effect,  which  is  the 
thing  discovered,  applied  by  the  appellant  to  produce  a  new  and 
useful  effect  }  And  what  is  the  new  effect  thus  to  be  produced  by 
the  effect  discovered }  Whatever  it  may  be,  it  must  be  produced 
by  means  that  are  new,  by  some  invention,  some  contrivance,  or 
production  of  something  that  did  not  before  exist.  The  beneficial 
effect  of  the  position  of  the  ice  is  the  retardation  of  its  dissolution. 
No  new  and  further  effect  is  proposed.  That  retardation  is  the 
ultimate  effect  contemplated.  No  new  means  are  intended  to  be 
used  which  can  be  the  subject  of  a  patent.  A  new  effect  from  old 
means  will  not  justify  a  patent  from  those  old  means.  This  case 
is,  therefore,  not  within  the  rule  or  doctrine  thus  advanced  to 
supply  it. 


508  *  JUDGE    cranch's   decisions. 

The  patent  to  Mr.  Tudor  for  filling  the  interstices  between  the 
blocks  of  ice  with  some  non-conducting  substance  is  cited  as  a 
precedent  for  the  present  application.  No  judicial  decision  is  pro- 
duced affirming  the  validity  of  that  patent,  and  it  seems  to  me  to 
rest  upon  very  doubtful  ground;  but  it  is  to  be,  presumed  that  the 
commissioner  who  issued  it  was  satisfied  that  the  means  used  were  a 
new  invention. 

Mr.  Dolland's  patent  for  an  improvement  is  also  referred  to  ;  but 
there  the  means  used  were  decided  to  be,  as  to  him,  a  new  inven- 
tion, although  Dr.  Hall  had,  forty  years  before,  constructed  two  tele- 
scopes upon  the  same  j)7'inciple,  but  had  not  pursued  the  matter 
and  brought  it  into  public  use.  That  case  has  no  analogy  to  the 
present. 

In  the  reasons  of  appeal,  it  is  suggested  that  patents  for  processes 
or  modes  of  procedure,  in  preserving  animal  and  vegetable  sub- 
stances by  means  extremely  simple,  have  been  granted  in  England 
and  in  this  country  ;  but  as  they  are  not  particularly  brought  to 
my  notice,  I  cannot  say  how  far  they  may  be  considered  as  prece- 
dents to  justify  the  present  application.  I  presume  that,  in  all  of 
them,  something  new  was  invented  ;  something  more  than  the  dis- 
covery of  a  fact  or  a  principle,  and  the  application  of  such  fact  or 
principle  to  some  useful  purpose  by  old  means,  or  by  means  not 
newly  invented. 

It  is  also  suggested,  in  the  reasons  of  appeal,  that  "  the  Commis- 
sioner is  bound  to  issue  a  patent  for  the  thing  claimed,  if,  on  ex- 
amination, it  shall  not  appear  to  him  that  the  same  had  been  in- 
vented or  discovered  by  any  other  person  in  this  country  prior  to 
the  alleged  invention  or  discovery  thereof  by  the  applicant,  or  that 
it  had  been  patented  or  described,  &c.,  as  stated  in  the  7th  section 
of  the  act  of  July  4,  1836;  and  that  the  discovery  in  question  is 
not  placed  In  either  of  the  conditions  that  would  justify  the  refusing 
of  a  patent  under  the  law. 

But  the  7(h  section  refers  to  the  6th,  by  which  it  appears  that  a 
patent  is  to  bo  issued  only  to  a  person  who  has  discovered  or  invented 
some  neio  and  useful  art,  &ic.,  or  some  new  and  useful  improvement 
on  any  art,  cVc. 

The  Com;nissioner,  therefore,  is  to  decide,  in  the  first  place, 
whether  the  i  ivention  is  new,  and  whether  it  is  the  proper  subject  of 
a  patent ;  he  is  bound  to  refuse  it,  although  it  may  not  be  liable  to 
the  particular  objections  specified  in  the  7th  section. 


JUDGE      CRANCH's     DECISIONS.  509 

It  is  also  said,  in  the  reasons  of  appeal,  that  the  professed  rule  of 
the  office  is,  "  that  where  the  question  is  at  all  doubtful,  the  patent 
should  be  granted." 

This  rule,  I  suppose,  must  have  been  adopted  when  the  applicant 
had  no  remedy  if  the  Commissioner  rejected  his  claim,  and  the  de- 
cision of  the  Commissioner  was  affirmed  by  the  board  of  examiners 
under  the  7th  and  16th  sections  of  the  act  of  July  4,  1836  ;  which 
last  mentioned  section  gave  the  applicant  a  remedy,  by  bill  in 
equity,  only  in  case  the  patent  was  refused  on  the  ground  that  it 
would  interfere  with  an  unexpired  patent  previously  granted.  In 
all  other  cases  of  refusal,  the  applicant  had  no  remedy ;  whereas, 
if  the  patent  should  be  granted,  its  validity  might  be,  at  all  times, 
questioned  in  the  courts  of  law.  It  was  reasonable,  therefore,  to 
adopt  such  a  rule. 

But  now,  by  the  lOth  section  of  the  act  of  March  3,  if  the  patent 
be  refused  for  any  cause,  either  by  the  Commissioner  or  the  judge, 
the  applicant  may  still  establish  his  right  to  a  patent  by  a  bill  in 
equity. 

The  reason  of  the  rule,  therefore,  fails,  and  I  should  not  think 
myself  bound  by  it,  if  I  thought  this  to  be  a  case  of  doubt,  which  I 
do  not. 

Every  patent  is  a  monopoly;  and  nothing  can  justify  it  but  the 
natural  right  of  property  which  a  man  has  in  the  products  of  his 
own  labor  and  ingenuity.  With  this  exception,  it  is  in  derogation 
of  common  right;  and  it  should  be  strictly  confined  to  the  case  ex- 
cepted. Upon  the  whole,  therefore,  I  am  of  opinion,  and  so  decide, 
that  the  decision  of  the  Commissioner  of  Patents,  that  the  applicant, 
John  F.  Kemper,  was  not  entitled  to  receive  a  patent  for  the  manner 
of  stowing  ice,  by  placing  the  blocks  edgewise,  was  correct,  and  the 
same  is  hereby  confirmed. 

And  I  hereby  certify  the  same  to  the  said  Commissioner  of  Pa- 
tents. And  I  do  further  certify  that,  having  received  an  appeal 
and  the  petition  herewith  enclosed  of  John  F.  Kemper,  and  the 
original  papers  named  in  the  letter  from  the  Commissioner  of  Pa- 
tents of  the  13th  of  February,  1841,  herewith  also  enclosed,  I  or- 
dered notice  to  be  given,  as  appears  in  my  order  of  the  17th  of 
February,  1841,  also  herewith  enclosed,  which  was  returned  to  me 
on  the  18th  of  February,  1841,  with  service  acknowledged.  I  fur- 
ther certify  that  the  parties  appeared  before  me  at  my  chambers, 
on  Monday,  the  8th  of  March,  1841,  when,  by  consent,  the  hearing 
43* 


510  JUDGE     CRANCH  S     DECISIONS. 

was  postponed  to  Monday,  the  15th  of  March,  when  the  applicant, 
by  Dr.  Thomas  P.  Jones,  his  attorney,  presented  his  written  answer 
to  the  grounds  of  the  Commissioner's  decision,  (which  written  answer 
is  also  herewith  enclosed,)  when  the  hearing  was  further  postponed, 
by  consent,  to  Wednesday  the  17th  instant,  and  on  that  day  further 
postponed  until  Friday,  the  19th  instant,  when  the  parties  attended, 
and  the  Commissioner  filed  his  reply  to  the  argument  of  Dr.  Jones, 
which  is  also  herewith  enclosed,  and  the  case  was  then  submitted 
without  further  argument. 

All  which  papers  are  herewith  transmitted  to  the  Commissioner  of 
Patents  this  22d  day  of  May,  1841.  W.  CRANCH. 


George  W.  Hildreth,  appellant 


'  i       Appeal   from  the  decision  of 


j  the  Commissioner  of  Patents. 
George  Heath,  appellee.  J 

On  the  29th  of  April,  1840,  George  Heath  filed  in  the  Patent 
Office  his  application  for  a  patent  for  his  invention  of  an  improved 
canal  lock  gate. 

The  Commissioner  being  of  opinion  that  the  patent  thus  applied 
for  would  interfere  with  an  unexpired  patent  granted  to  George  W. 
Hildreth,  on  the  19th  of  March,  1840,  gave  notice  thereof  to  the 
parties,  and,  upon  a  hearing  before  him,  decided,  that  George  Heath 
was  the  original  and  first  inventor,  and   entitled  to  a  patent  therefor. 

From  this  decision  Mr.  Hildreth  has  appealed,  and  the  question 
is  now  submitted  to  me  by  the  parties  upon  written  argument. 

The  Commissioner  has  furnished  a  certificate  in  writing  of  his 
opinion  and  decision  ;  and  Mr.  Hildreth  has  filed  his  reasons  of  appeal, 
with  the  written  argument  of  his  counsel. 

The  reasons  for  appeal  thus  filed  are  eight  in  number,  but  may  be 
reduced  to  three. 

1.  Because  Mr.  Heath  was  not  the  first  inventor,  in  the  meaning 
of  the  patent  law,  inasmuch  as  his  invention  was  never  reduced  to 
practice,  but  was  the  mere  speculation  of  a  philosopher  or  mecha- 
nician. 

2.  Because  he  never  filed  a  caveat  pursuant  to  the  12th  section  of 
the  Act  of  July  4,  1836. 

3.  Because  he  has  forfeited  his  claim  to  the  invention  by  his  delay 
in  applying  for  a  patent.  ♦ 


JUDGE     CRANCH's    DECISIONS.  511 

1.  Upon  the  first  point  the  very  ingenious  argument  of  Mr.  Hil- 
dreth's  counsel  is  founded  upon  a  dictum  of  Mr.  Justice  Story,  in  the 
case  of  Bedford  v.  Hunt,  et.  al.,  1  Mason,  304,  that  "  the  first  inven- 
tor who  has  put  the  invention  in  practice,  and  he  only,  is  entitled  to  a 
patent ; "  and  that  dictum  was  perhaps  founded  on  the  words  in  the 
6th  section  of  the  Act  of  February  21,  1793,  viz  :  "  or  that  the  thing 
thus  secured  by  patent  was  not  originally  discovered  by  the  patentee, 
hut  had  been  in  use,  or  had  been  described  in  some  public  work,  ante- 
rior to  the  supposed  discovery  by  the  patentee,"  &c.,  from  which 
an  inference  seems  to  be  drawn  that  the  defence  —  that  the  7natter 
was  not  originally  discovered  ly  the  patentee  —  would  not  avail  the 
defendant,  unless  he  show  also  that  it  had  been  in  use  by  the  prior 
discoverer. 

But  the  words  "  hut  had  heen  in  use  "  seem  to  have  been  carefully 
excluded  from  the  15lh  section  of  the  act  of  1836,  which,  like  the 
6th  section  of  the  act  of  1793,  states  the  matters  which  may  be 
given  in  evidence  under  the  general  issue  in  an  action  for  infringing 
the  plaintiff's  patent. 

By  thus  excluding  these  words  the  defence,  "  that  the  patentee  was 
not  the  original  and  first  inventor  or  discoverer  of  the  thing  patented," 
is  complete,  without  showing  that  the  first  inventor  had  put  his  inven- 
tion in  practice. 

None  of  the  patent  laws  have  ever  required  that  the  invention 
should  be  in  use,  or  reduced  to  actual  practice,  before  the  issuing  of 
the  patent,  otherwise  than  by  a  model,  drawings  and  specification 
containing  a  written  description  of  the  invention,  and  of  the  manner 
of  making,  constructing,  and  using  the  same,  in  such  full,  clear  and 
exact  terms  as  to  enable  any  person  skilled  in  the  art  to  which  it 
appertains,  to  make,  construct  and  use  the  same.  In  England  it  is 
understood  that,  if  the  thing  is  in  use  before  the  issuing  of  the  patent, 
it  is  void  ;  and  our  act  of  March  3,  1839,  section  7,  in  order  to 
meet  such  an  objection,  provides  that  the  use  of  the  thing,  even 
by  leave  of  the  inventor,  for  two  years  before  his  application  for  a 
patent,  shall  not  invalidate  it;  a  fortiori  the  use  of  by  a  third  per- 
son or  subsequent  inventor,  after  the  first  invention  and  before  the 
issuing  of  the  patent  to  the  first  inventor,  without  his  consent,  will 
not,  under  our  patent  laws,  be  a  bar  to  the  issuing  of  it. 

Mr.  Justice  Story,  in  the  case  of  Bedford  v.  Hunt,  was  not  con- 
sidering the  question  whether  the  patent  should  he  issued,  but 
whether  it  should  be  invalidated  by  prior  use.     He  has  not  said  that, 


512  JUDGE  cranch's  decisions. 

under  any  circumstances,  an  invention  must  be  in  use  before  a 
patent  for  it  can  be  obtained,  and  his  dictum  is  wholly  inapplicable 
to  the  question  whether  the  Commissioner  of  Patents  should  issue  a 
patent. 

If  a  patent  should  be  issued  to  Mr.  Heath,  its  validity  would  be 
still  a  question  open  to  the  courts ;  and  is  one  which  can  be  conclu- 
sively settled  by  the  courts  only. 

By  the  7th  section  of  the  act  of  1836,  the  Commissioner  is  bound 
to  issue  a  patent  in  the  case,  and  under  the  circumstances  there 
stated.  He  has  in  such  a  case  no  discretion  ;  and  the  present  is 
such  a  case. 

By  that  section  it  is  enacted  "  that,  on  the  filing  of  any  such 
application,  description  and  specification,  and  the  payment  of  the  duty 
hereinafter  provided,  the  Commissioner  shall  make  or  cause  to  be 
made  an  examination  of  the  alleged  new  invention  or  discovery,  and 
if,  on  such  examination,  it  shall  not  appear  to  the  Commissioner 
that  the  same  had  been  invented  or  discovered  by  any  other  person 
in  this  country  prior  to  the  alleged  invention  or  discovery  thereof 
by  the  applicant,  or  that  it  had  been  patented,  or  described  in  any 
printed  publication  in  this  or  any  foreign  country ;  or  had  been  in 
public  use  or  on  sale,  with  the  applicant's  consent  or  allowance, 
prior  to  the  application,  if  the  Commissioner  shall  deem  it  suffi- 
ciently useful  and  important,  it  shall  be  his  duty  to  issue  a  patent 
therefor. 

It  appears  by  the  proceedings  before  the  Commissioner  that  Mr. 
Heath  regularly  filed  his  application,  description  and  specification, 
and  paid  the  duty  ;  that  the  Commissioner  made  the  examination, 
and  that  upon  such  examination  it  did  not  appear  to  him  that  the 
same  had  been  invented  or  discovered  by  any  other  person,  or  had 
been  patented  or  described  in  any  printed  publication  in  this  or  any 
foreign  country,  prior  to  the  alleged  invention  or  discovery  thereof 
by  the  applicant ;  or  that  it  had  been  in  public  use  or  on  sale,  with 
the  applicant's  consent  or  allowance,  prior  to  his  application. 

The  Commissioner  was,  therefore,  prima  facie  bound  to  issue  the 
patent  to  Mr.  Heath. 

At  first  view  it  may  seem  doubtful  from  the  words  of  that  sec- 
tion, whether  a  patent  issued  to  the  second  inventor,  before  the  appli- 
cation of  the  first  inventor,  would  not  be  a  bar  to  the  issuing  of  a 
subsequent  patent  to  the  first  inventor.  But  upon  comparing  the 
words  of  that  section  with  those  of  the  6th,  8th,  and  15th  sections 


JUDGE    CRANCh's    DECISIONS.  513 

of  the  same  act,  it  is  evident  that  the  patent,  which  would  bar  the 
issuing  of  a  patent  to  the  applicant,  must  be  a  patent  issued  prior 
to  his  invention,  and  not  merely  prior  to  his  application. 

Having  complied  with  all  the  requisites  of  the  7th  section,  what 
is  to  prevent  the  applicant  from  obtaining  his  patent.  It  is  alleged 
that  he  was  not  the  first  inventor,  because  he  had  not  reduced  his 
invention  to  practice.  But  that  objection  is  answered  by  showing 
that  there  is  no  law  which  requires  an  inventor  to  put  his  invention 
in  practice  or  use,  before  obtaining  his  patent  ;  and  it  is  perfectly 
immaterial  to  him  whether  the  subsequent  inventor  had  put  it  in 
practice  or  not.  That  fact  cannot  effect  the  right  of  the  first 
inventor.  If  Congress  had  intended  that  a  patent  to  the  second 
inventor  should  be  a  bar  to  a  patent  to  the  first  inventor,  they 
would  not  have  given  jurisdiction  to  the  Commissioner  to  decide 
the  question  of  priority  between  them,  and  to  grant  a  patent  to  the 
first  inventor  in  cases  of  interference,  as  they  have  done  by  the  eighth 
section  of  the  act. 

Neither  that  section,  nor  any  other  section  of  that,  or  any  other 
act,  makes  the  right  of  the  patentee,  or  of  the  applicant,  depend 
upon  the  fact  of  the  invention  being  reduced  to  actual  practice, 
except  in  the  case  of  an  aUe7i  patentee  failing  and  neglecting,  "  for 
the  space  of  eighteen  months  from  the  date  of  the  patent,  to  put 
and  continue  on  sale  to  the  public,  on  reasonable  terms,  the  inven- 
tion or  discovery  for  which  the  patent  issued."  From  this  excep- 
tion, an  inference  may  be  drawn,  that  a  citizen  patentee  cannot 
lose  his  right  by  non  user,  unless  it  amount  to  evidence  of  an  aban- 
donment of  the  patent ;  and  the  question  of  an  abandonment  of  a 
patent  is  a  question  for  the  jury  on  a  trial  at  law. 

If  the  invention  be  the  mere  speculation  of  a  philosopher  or  me- 
chanician in  his  closet,  and  he  takes  no  step  towards  obtaining  a 
patent,  but  keeps  his  invention  secret,  and  another  person,  who  is 
also  an  original  but  subsequent  inventor  of  the  same  thing,  obtain 
a  patent  for  it  and  bring  it  into  use,  it  has  been  held,  both  in  Eng- 
land and  in  this  country,  that  the  patentee,  in  a  suit  at  law,  is  to  be 
considered  as  the  first  inventor.  But  it  has  happened  in  such  case, 
as  in  many  others,  that  elementary  writers,  and  subsequent  tribunals, 
have  laid  down  the  doctrine  in  broader  terms  than  the  cases  upon 
which  it  was  founded  will  warrant. 

Thus  Smith,  in  his  Epitome  of  the  Patent  Laws,  (p.  11,)  says: 
'^It  sometimes  happens  that  two  men  severally  discover  the  same 


514  JUDGE    CftANCH  S    DECISIONS. 

thinor,  each  by  his  own  unassisted  exertions  ;  when  this  happens, 
the  first  who  communicates  it  to  the  public  is  deemed  the  first  inven- 
tor, and  entitled  to  the  patent ;  "  and  he  cites  Boulton  v.  Bull,  2 
H.  Be.,  487;  Forsyth  v.  Riviere,  Chitty,  Prerog.  of  the  Croion,  182, 
n.  ;  Lewis  v.  Marling,  10  B.  8f  C.,22;  Wood  v.  Zimmer,  Holt,  N. 
P.  C.  98  ;  Edgebury  v.  Stephens,  2  SalL  47.  And  Mr.  Justice 
Story,  in  the  case  before  cited,  says  :  "  The  first  inventor  who  has 
put  the  invention  in  practice,  and    he  only,  is  entitled  to  a  patent." 

The  doctrine  thus  broadly  laid  down  is  not  supported  to  that  ex- 
tent by  the  cases  cited,  and  it  would  be  unjust,  if  it  were,  for  it 
makes  no  exception  of  the  bond  fide  first  inventor  who  is  "  using 
reasonable  diligence  in  adapting  and  perfecting  "  his  invention,  and 
whose  right  is  saved  by  the  spirit,  if  not  the  letter,  of  the  fifteenth 
section  of  the  act  of  1836,  which  makes  it  a  good  defence  to  an 
action  for  infringing  the  patent,  that  the  plaintiff  had  "  unjustly 
obtained  the  patent  for  that  which  was  in  fact  invented  and  dis- 
covered by  another  who  was  using  reasonable  diligence  in  adapting 
or  perfecting  the  same." 

If  such  a  case  had  been  presented  to  the  mind  of  Mr.  Justice 
Story,  there  can  hardly  be  a  doubt  that  he  would  have  excepted  it 
from  the  broad  terms  of  the  doctrine  as  laid  by  him  in  the  case  of 
Bedford  v.  Hunt. 

Such,  from  the  evidence  and  admissions  of  counsel,  was  the  case 
of  Mr.  Heath.  He  was  using  reasonable  diligence  in  adapting  and 
perfecting  his  invention  ;  and  it  appears  by  testimony  adduced  by 
Mr.  Hildreth  that  in  the  winter  of  1839,  before  he  obtained  his 
patent,  Mr.  Heath  exhibited  to  the  witness,  Alfred  Barrett,  who  had 
in  his  possession  a  model  of  Mr.  Hildreth's  paddle-gate,  his,  the 
said  George  Heath's,  model  of  his  gate,  and  claimed  to  be  the  inven- 
tor thereof;  it  is  probable,  therefore,  that  Mr.  Hildreth  had  notice  of 
Mr.  Heath's  claim  before  he  obtained  his  patent. 

The  doctrine  as  stated  by  Mr.  Smith  and  by  Mr.  Justice  Story 
seems  to  have  originated  in  Dolland''s  case,  cited  by  BuUer,  J.,  in 
the  case  of  Boulton  v.  Bull.  Dolland  had  a  patent  for  an  improve- 
ment in  make  object-glasses  for  telescopes.  It  was  objected  that 
he  was  not  the  inventor,  "  but  that  Dr.  Hall  had  made  the  same  dis- 
covery before  him.  But  it  was  holden,  that  as  Dr.  Hall  had  confined 
it  to  his  closet,  and  the  public  was  not  made  acquainted  with  it,  Dol- 
land was  to  be  considered  as  the  inventor." 

The  case  of  Dolland  is  not  reported  ;  and  all  that  we  know  of  it 


JUDGE    CRANCH's    DECISIONS.  515 

is  what  was  said  by  Duller,  J.,  in  the  case  of  Boulton  v.  Bell.  2  H. 
Be..,  463-  '4  ;  and  upon  that  foundation  is  probably  built  the  broad 
doctrine  that  the  first  pf  the  two  original  inventors  who  communi- 
cate the  invention  to  the  public  is  entitled  to  the  patent,  although  the 
other  invented  the  thing  first. 

Between  simultaneous  inventions,  this  may  be  just,  because  neither 
can  claim  priority,  but  it  cannot  be  just  that  the  prior  inventor,  who 
is  maturing  his  invention,  and  preparing  to  make  application  for  a 
patent  in  a  reasonable  time,  should  be  defeated  by  a  subsequent 
inventor  who  first  obtains  a  patent.  This  is  not  the  doctrine  of 
Dolland's  case,  which  was  only  that  an  inventor  who  conjines  his 
invention  to  his  closet,  and  does  not  communicate  it  to  the  public, 
and  takes  no  steps  towards  obtaining  a  patent  until  a  subsequent 
original  inventor  has  obtained  his  patent,  thereby  forfeits  and 
abandons  his  claim  to  priority  of  invention.  But  the  question  of 
forfeiture  or  abandonment  is  for  the  jury,  upon  a  trial  at  law.  The 
first  inventor  is  prima,  facie  entitled  to  a  patent,  and  the  Commis- 
sioner, as  before  observed,  is  bound  to  issue  it  under  the  7th  section 
of  the  act  of  1836,  if  certain  facts  should  not  appear  to  the  Com- 
missioner as  therein  specified  ;  which  specification  of  facts  does  not 
include  delay  or  abaridonment ;  so  that  the  question  of  delay  or  aban- 
donment is  not,  by  that  section,  submitted  to  the  jurisdiction  of  the 
Commissioner. 

I  do  not  consider  the  expression  "  reduced  to  practice"  as  import- 
ing the  bringing  the  invention  into  use.  When  applied  to  an 
invention,  it  generally  means  the  reducing  it  into  such  form  that  it 
may  be  used,  so  as  not  to  be  a  mere  theory.  If  a  machine  be  in- 
vented and  described  in  such  a  manner  that  it  may  be  made  and 
used,  and  especially  if  a  model  be  made,  the  invention  may  be  said 
to  be  reduced  to  practice.  In  the  present  case,  it  is  admitted  in  argu- 
ment (and  such  is  the  evidence)  that  Mr.  Heath,  in  the  summer  of 
1836,  actually  made  a  lock  gate  according  to  his  specification.  It 
was,  indeed,  a  small  one,  a  model  only,  but  the  size  is  of  no  impor- 
tance. The  thing  was  done  ;  the  invention  was  reduced  to  practice  ; 
and  it  was  demonstrated  thereby  that  the  invention  was  practicable. 

I  am,  therefore,  and  for  the  reasons  before  stated,  of  opinion  that 
where  the  invention  is  not  of  a  mere  philosophical  speculation, 
abstraction,  or  theory,  but  of  something  corporeal,  something  to  be 
manufactured,  the  applicant  need  not  show  that  he  has  reduced  his 
invention  to  practice  otherwise  than  by  filing  his  specification  and 


516  JUDGE    CRANCH  S     DECISIONS. 

furnishing  drawings  and  a  model,  as  required  by  the  statute,  where 
the  nature  of  the  case  admits  of  drawings  or  of  a  representation  by  a 
model.  These  having  been  thus  filed  and  furnished  by  Mr.  Heath, 
and  it  being  admitted  that  he,  in  point  of  time,  was  the  first  inventor 
of  the  thing  patented,  he  is  entitled  to  a  patent  therefor  notwithstand- 
ing the  patent  granted  to  Mr.  Hildreth,  unless  he  has  lost  his  right  by 
not  filing  a  caveat,  or  by  delay  in  applying  for  his  patent. 

2.  The  second  reason  of  appeal  is,  that  Mr.  Heath  never  filed  a 
caveat,  pursuant  to  the  12th  section  of  the  act  of  July  4,  1836. 

That  section  was  introduced  for  the  benefit  of  the  inventor,  but  was 
not  necessary  to  the  preservation  of  his  right.  It  only  enables  him 
to  have  notice  of  any  interfering  application. 

Godson  (Law  of  Patents,  146)  says  :  "  Of  its  nature  and  effect 
much  misconception  has  arisen.  It  does  not  create  any  right,  but  is 
simply  a  request  to  he  favored  with  information."  Again,  he  says  : 
"  Upon  the  whole,  therefore,  the  entenng  of  a  caveat  is  nothing  more 
than  giving  information  that  there  is  an  invention  nearly  completed, 
and  requesting  that,  if  any  other  person  should  apply  for  a  patent  for 
the  same  thing,  the  preference  may  be  given  to  him  who  entered  it, 
which  request  is  complied  with  by  the  courtesy  of  the  crown,  upon  its 
being  satisfied  of  its  reasonableness  by  the  attorney-general,  or  the 
opinion  of  the  lord  chancellor  ;  and  when  the  patent  is  granted,  it  is 
to  be  judged  of  as  if  no  caveat  had  been  entered." 

But  this  caveat  gives  no  notice  to  the  world,  or  even  to  the. inter- 
fering applicant.  It  is  notice  to  the  Commissioner  only  ;  and  is 
locked  up  in  the  secret  and  confidential  archives  of  the  ofiice.  It 
would  not  in  any  manner  have  strengthened  the  title  of  Mr.  Heath  ; 
nor  does  the  omission  of  it  impair  that  title,  or  aid  that  of  Mr.  HiU 
dreth. 

This  reason  of  appeal,  therefore,  as  well  as  the  first,  must  be  over- 
ruled. 

3.  The  statute  does  not  limit  any  time  in  which  the  inventor  must 
apply  for  a  patent  ;  nor  does  it  declare  a  forfeiture  by  reason  of  any 
delay.  The  delay,  therefore,  seems  to  be  unimportant,  unless  it 
amounts  to  evidence  of  abandonment  of  the  claim.  It  is  not  one  of 
the  specified  grounds  for  which  the  Commissioner  is,  by  the  7th  sec- 
tion of  the  act  of  1836,  authorized  to  refuse  to  grant  the  patent ;  and 
it  seems  to  be  a  matter  within  the  peculiar  province  of  the  jury  upon 
a  trial  at  law,  in  any  action  which  either  of  the  patentees  may  insti- 
tute against  the  other.     If  there  be  any  limit  of  the  time  of  applica- 


JUDGE     CRANCh's     DECISIONS.  517 

tlon,  it  must  be  a  reasonable  limit,  and  that  is  proper  matter  for  the 
consideration  of  a  jury  ;  and  I  am  very  much  inclined  to  the  opinion, 
that  any  matter  of  defence  which  it  is  the  peculiar  province  of  a  jury  to 
decide,  and  which  is  not  by  the  7th  section  of  the  act  of  1836,  made  a 
ground  for  the  refusal  of  a  patent  by  the  Commissioner,  should  be  left  by 
him  to  be  decided  by  the  jury  in  a  subsequent  action  at  law. 

In  Morris  v.  Huntingdon^  1  Paine  354,  Mr.  Justice  Thompson 
said  :  "  No  man  is  to  be  permitted  to  lie  hy  for  years  and  then  take 
out  a  patent.  If  he  has  been  practising  his  invention  with  a  view  of 
improving  it,  and  thereby  rendering  it  a  greater  benefit  to  the  public 
before  taking  out  a  patent,  that  ought  not  to  prejudice  him  ;  but  it 
should  always  be  a  question  suhnitted  to  the  jury,  what  was  the 
intent  of  the  delay  of  the  patent,  and  whether  the  allowing  the  inven- 
tion to  be  used  without  a  patent,  should  not  be  considered  an  aban- 
donment, or  present  of  it  to  the  public  ?  " 

In  Pejinock  Sf  Sellers  v.  Dialogue,  2  Peters  16,  Mr.  Justice 
Story,  in  delivering  the  opinion  of  the  court,  says  :  "  It  has  not  been, 
and  indeed  cannot  be,  denied,  that  an  inventor  may  abandon  his 
invention  and  surrender  or  dedicate  it  to  the  public."  "  The  ques- 
tion which  generally  arises  at  trials  is  a  question  of  fact,  rather  than 
of  law,  whether  the  acts  of  acquiescence  of  the  party  furnish,  in  the 
given  case,  satisfactory  proof  of  an  abandonment,  or  dedication  of  the 
invention  to  the  public."  The  point  decided  by  the  court  in  that 
case,  was  "  that  the  first  inventor  cannot  acquire  a  good  title  to  a 
patent,  if  he  suffers  the  thing  invented  to  go  into  public  use,  or  to  be 
publicly  sold  for  use,  before  he  makes  application  for  a  patent." 
But  it  is  believed  that  it  has  not  yet  been  decided  that  the  right  of  the 
first  inventor  has  been  lost  merely  by  lapse  of  time  between  the 
invention  and  application  for  the  patent,  unless  there  has  been  some 
intermediate  use  by  the  applicant,  or  by  his  consent ;  and  especially 
where  he  was  bond  fide  taking  measures  to  improve  or  perfect  his 
invention,  and  to  prepare  for  applying  for  the  patent ;  which,  from 
the  evidence,  appears  to  have  been  the  case  of  Mr.  Heath. 

If,  therefore,  the  question  of  abandonment  be  cognizable  by  the 
Commissioner,  there  is,  in  my  opinion,  no  evidence  to  support  it ; 
and  this  reason  of  appeal  must  also  be  overruled. 

It  is,  therefore,  upon  the  whole  case,  my  opinion,  and  I  do  so 
decide  and  adjudge,  that  the  decision  of  the  Commissioner  of  Patents 
in  this  cause  be,  and  it' is  hereby,  affirmed. 

Certified  by  me,  this  15th  of  October,  1841.  W.  CRANCH. 

44 


518  JUDGE    CRANCH  S    DECISIONS. 

District  of  Columbia,  to  tint : 

I,  William  Cranch,  Chief  Justice  of  the  District  of  Columbia,  cer- 
tify to  the  Commissioner  of  Patents,  that,  upon  the  appeal  of  George 
W.  Ilildreth  from  the  decision  of  the  Commissioner  of  Patents,  upon 
the  application  of  George  Heath  for  a  patent  for  hydraulic  gates  for 
canal  locks,  &c.,  on  the  4th  of  September,  1841,  I  ordered  notice  to 
be  given  to  the  parties  to  appear  before  me  on  the  last  Monday  of 
September,  1841,  for  the  hearing  of  the  said  appeal ;  at  which  time 
the  said  George  W,  Hildreth  appeared  by  Thomas  P.  Jones,  Esq., 
and  the  said  George  Heath  by  Mr.  Fitzgerald,  and  submitted  the 
case  to  my  consideration  upon  the  evidence  and  the  reasons  of 
appeal,  and  the  argument  of  the  counsel  of  Mr.  Hildreth,  and  the 
^rounds  of  the  decision  of  the  said  Commissioner,  fully  set  forth  in 
writing  :  all  which  being  duly  heard  and  considered,  I  have  decided, 
and  do  hereby  decide  and  adjudge,  that  the  decision  of  the  said  Com- 
missioner of  Patents  —  that  the  said  George  Heath  is  the  original  and 
first  inventor  of  the  matter  for  which  he  has  applied  for  a  patent,  and 
is  entitled,  as  such,  to  receive  the  patent  for  which  he  has  applied  — 
be,  and  the  same  is  hereby,  affirmed. 

Given  under  my  hand,  this  15th  of  October,  1841. 

W.  CRANCH. 

I  herewith  return  all  the  papers. 

W.  CRANCH. 


John  Arnold,  appellant. 


vs.  I  Appeal  from  the  decision  of  the  Commis- 

Geo.  G.  Bishop,  &  John  f  sioner  of  Patents. 

Akin,  appellees.         J 

On  the  19th  of  September,  1840,  John  Arnold  made  application 
for  a  patent  for  his  invention  of  a  "  new  and  useful  manner  for  form- 
ing the  web  of  felt  cloth  and  web  for  other  purposes,"  and  in  October 
following  complied  with  the  other  requisites  of  the  act  of  the  4th 
July,  1836.  A  caveat,  however,  had  been  entered  by  George  G. 
Bishop  and  John  Akin,  who  claimed  to  be  joint  inventors  with  the 
said  John  Arnold  of  the  same  machine  ;  and  on  the  20th  of  March, 
1841,  the  said  Bishop  and  Akin  made  application  by  petition  for  a 
patent  for  the  same  invention  in  the  name  of  the  said  Bishop,  Akin, 
and  John  Arnold,  averring  it  to  be  the  joint  invention  of  the  three. 


JUDGE     CRANCH's    DECISIONS.  519 

The  Commissioner,  on  the  30th  of  March,  1841,  decided  them  to  be 
interfering  claims,  and  notice  was  given  to  the  parties  by  the  Com- 
missioner that  he  would  hear  them  on  the  second  Monday  in  May, 
1841,  and  they  respectively  took  the  depositions  of  several  witnesses. 
On  the  16th  of  June,  1841,  the  Commissioner  decided  that  it  was 
to  be  considered  a  joint  invention,  and  that  neither  of  the  parties  can 
claim  the  whole,  and  rejected  the  applications  of  all  the  applicants. 
From  this  decision,  IMr.  Arnold  has  appealed,  and  the  reasons  stated 
are  in  effect :  That  the  Commissioner  has  considered  and  acted  upon 
evidence  not  competent  according  to  the  general  rules  of  law,  and 
upon  testimony  not  taken  according  to  the  regulations  prescribed  and 
promulgated  by  himself;  and  that,  independent  of  the  evidence  thus 
objected  to,  there  is  not  sufficient  to  establish  the  fact  of  joint  inven- 
tion. And  Mr.  Arnold's  attorney  asks  leave  to  be  further  heard  if 
his  objections  to  the  evidence  should  be  overruled. 

The  evidence  objected  to  consists  of — 

1.  John  Akin's  ex  parte  affidavit  in  support  of  the  same  joint 
claim. 

3.  Letters  from  Mr.  Rowley  to  the  Commissioner  of  Patents,  dated 
respectively  March  15,  May  2,  and  June  9,  1841. 

4.  George  G.  Bishop's  letters  to  the  Commissioner  of  7th  of  May 
and  12th  June,  1841. 

5.  Mr.  Rowley's  deposition. 

One  of  the  objections  to  the  deposition  of  Mr.  Rowley  is,  that  the 
Commissioner  of  Deeds,  before  whom  the  deposition  was  taken,  has 
not  certified  upon  the  deposition,  according  to  the  5th  rule,  that  it 
was  sealed  up  by  him  ;  and  there  is  no  evidence  that  it  was  in  fact 
sealed  up  by  him. 

By  the  act  of  March  3,  1839,  §  12,  it  is  enacted,  "  That  the  Com- 
missioner of  Patents  shall  have  power  to  make  all  such  regulations, 
in  respect  to  the  taking  of  evidence  to  be  used  in  contested  cases 
before  him,  as  may  be  just  and  reasonable." 

Under  this  authority,  the  Commissioner  made  out  and  promulgated 
the  following  rules  : 

RULES  FOR  TAKING  AND  TRANSMITTING  EVIDENCE,  &,c.,  TO  THE 
COMMISSIONER  OF  PATENTS. 

Patent  Office, 
1st.  That  all  statements,  declarations,  evidence,  &c.,  shall  be  in 


520  JUDGE    CRANCH  S    DECISIONS. 

writing,  setting  forth,  nninutely  and  particularly,  the  point  or  points 
at  issue,  and  shall  be  verified  by  oath  or  affirmation. 

2d.  That  all  statements,  declarations,  proofs,  and  evidence,  shall 
be  filed  in  the  Patent  Office,  by  the  parties  respectively,  before  the 
day  of  hearing. 

3d.  That,  before  the  deposition  of  a  witness  or  witnesses  be  taken 
by  either  party,  notice  should  be  given  to  the  opposite  party  of  the 
time  and  place  when  and  where  such  deposition  or  depositions  will 
be  taken  ;  so  that  the  opposite  party,  either  in  person  or  by  attorney, 
shall  have  full  opportunity  to  cross-examine  the  witness  or  witnesses. 
And  such  notice  shall,  with  proof  of  service  of  the  same,  be  attached 
to  the  deposition  or  depositions,  whether  the  party  cross-examine  or 
not ;  and  such  notice  shall  be  given  in  sufficient  time  for  the  appear- 
ance of  the  opposite  party,  and  for  the  transmission  of  the  evidence 
to  the  Patent  Office  before  the  day  of  hearing. 

4th.  That  no  evidence,  statement,  or  declaration,  touching  the 
matter  at  issue,  will  be  considered  upon  the  said  day  of  hearing, 
which  shall  not  have  been  taken  and  filed  in  compliance  with  these 
rules  :  Provided,  That  if  either  party  shall  be  unable,  from  good  and 
sufficient  reasons,  to  procure  the  testimony  of  a  witness  or  wit- 
nesses, within  the  above  stipulated  time,  then  it  shall  be  the  duty 
of  said  party  to  give  notice  of  the  same  to  the  Commissioner  of 
Patents,  accompanied  with  statements  of  the  cause  of  such  inability, 
which  last  mentioned  notice  to  the  Commissioner  shall  be  received 
by  him  days  previous  to  the  day  of  hearing  afore- 

said, viz.  :  the  day  of  next. 

5th.  That  all  evidence,  &c.,  shall  be  sealed  up  and  addressed  to 
the  Commissioner  of  Patents,  by  the  persons  before  whom  it  shall  be 
taken,  and  so  certified  thereon. 

The  first  of  these  rules  is  evidently  intended  to  apply  to  the  ini- 
tiatory proceedings  in  applications  for  patents,  and  to  uncontested 
cases,  where  the  Commissioner  may  consider  all  the  circumstances 
which  may  come  to  his  knowledge.  The  other  rules,  viz.  :  the  2d, 
3d,  4th,  and  5th,  are  applicable  to  contested  cases,  where  parties 
are  to  be  heard  ;  and  in  such  cases,  inasmuch  as  each  party  is  bound 
by  the  rules,  each  party  is  also  entitled  to  the  benefit  of  them.  The 
4th  rule  says  :  "  That  no  evidence,  statement,  or  declaration,  touch- 
ing the  matter  at  issue,  will  be  considered  upon  the  said  day  of  hear- 
ing which  shall  not  have  been  taken  and  filed  in  compliance  with 


JUDUE    CRANCH  S    DECISIONS. 


521 


these  rules."  This  is  a  restraint  imposed  upon  the  Commissioner 
himself  as  much  as  if  the  very  words  of  the  rule  had  been  contained 
in  the  statute  ;  for  the  rules,  made  in  conformity  with  the  law, 
while  they  remain  unabrogated,  are  as  binding  as  the  law  itself. 
The  rule  is  an  assurance,  an  engagement,  by  the  Commissioner, 
that  he  will  not,  at  the  hearing,  consider  any  evidence  not  taken 
and  filed  in  compliance  with  these  rules  ;  one  of  which  was  that  the 
person  taking  the  deposition  should  certify  thereon  that  it  was 
sealed  up  by  him.  This  is  not  an  immaterial  form.  It  is  a  security 
that  the  deposition  has  not  been  altered  after  it  left  the  hands  of 
the  magistrate  before  whom  the  deposition  was  taken.  In  the 
rules  which  the  Commissioner  has  promulgated,  he  has  not  reserved 
any  right  to  dispense  with  them,  in  particular  cases,  at  his  pleasure. 
After  a  deposition  has  been  taken  while  the  rules  were  in  force,  his 
dispensation  cannot  affect  that  deposition.  A  revocation  of  the  rules 
can  affect  only  subsequent  proceedings.  After  a  contest  has  arisen, 
the  parties  have  a  right  to  insist  not  only  that  the  evidence  should  be 
taken  agreeably  to  the  rules  prescribed  by  the  Commissioner,  but 
that  it  should  be  evidence  competent  in  law.  It  is  one  of  the  rules 
in  law,  that  no  man  can  be  a  witness  in  his  own  cause,  unless 
made  competent  by  statute,  or  by  being  called  upon  by  the  oppos- 
ing party  to  answer  upon  oath,  as  in  cases  of  equity  and  admiralty 
jurisdiction,  &c. 

If  the  witness  is  interested  he  is  excluded,  however  small  the 
amount  of  interest  may  be. 

Objection  was  made  to  the  taking  of  the  deposition  of  Mr.  Rowley, 
at  the  time  of  taking  it,  because  of  his  interest,  and  because  the 
notice  was  too  short ;  because  the  magistrate  was  not  named  before 
whom  the  deposition  was  taken,  and  because  the  time  was  so  late 
that  Mr.  Arnold  would  not  have  time  to  take  countervailing  tes- 
timony. 

The  interest  of  Mr.  Rowley  in  the  patent  right  is  the  same, 
whether  the  patent  should  be  granted  to  Mr.  Arnold  alone,  or 
jointly  to  the  three  applicants  ;  for  his  only  interest  is  as  a  member 
of  the  company  to  whom  all  the  applicants  have  bound  themselves 
to  convey  the  patent  right  when  obtained.  If  the  covenants  do  not 
cover  the  claim  for  a  patent,  then  Mr.  Rowley  is  not  interested  at 
all.  If  they  do  cover  it,  then  it  is  immaterial  to  him  which  of  the 
claimants  obtains  the  patent. 

The  objection  to  the  shortness  of  the  notice  is  answered  by  the 
44* 


522  JUDGE    CRANCH  S    DECISIONS. 

fact  that  Mr.  Arnold  did  appear  at  the  time  and  place,  and  cross- 
examined  the  witness.  The  lateness  of  the  time  is  no  cause  for 
rejecting  the  deposition ;  but  it  might,  perhaps,  have  been  good 
ground  for  an  application  to  the  Commissioner  of  Patents  to  allow 
further  time  for  taking  other  testimony  which  he  might  deem  impor- 
tant in  the  cause. 

But  the  objection  that  the  magistrate,  before  whom  the  deposition 
was  taken,  did  not  certify  thereon  that  it  was  sealed  up  by  him,  is 
sufficient  ground  for  excluding  that  deposition  from  the  consideration 
of  the  Commissioner  of  Patents. 

This  evidence,  then,  being  excluded,  there  remains  only,  on  the 
part  of  Messrs.  Bishop  and  Akin,  the  deposition  of  Mr.  Lowns- 
berry. 

This  deposition  is  admitted  to  have  been  taken  and  transmitted 
according  to  the  rules ;  but  it  is  said  that  it  shows  Mr.  Lownsberry  to 
be  so  interested  as  to  be  an  incompetent  witness.  In  that  respect, 
however,  he  stands  on  the  same  ground  with  Mr.  Rowley,  and  the 
same  answer  is  applicable  to  him. 

It  appears  by  his  deposition  that  the  idea  of  crossing  the  wool 
diagonally  was  suggested  by  Mr.  Bishop  and  Mr.  McLean,  or  one 
of  them,  before  Arnold  was  applied  to,  or  had  any  connection  with 
the  company  in  which  Lownsberry,  Bishop,  and  McLean  was  con- 
cerned ;  that,  upon  'the  recommendation  of  Mr.  Moulton,  Bishop, 
as  agent  of  the  company,  applied  to  Arnold  to  make  the  necessary 
machinery,  who  undertook  the  work,  and  was  to  have  one-fifth  of 
the  concern ;  that  he  made  a  machine  for  crossing  the  wool  at  right 
angles,  and  obtained  a  patent  for  it  in  1829  or  1830,  which  was 
afterwards  improved  by  him  and  Bishop,  who  obtained  a  patent  for 
the  improvement  in  their  name;  that  Bishop  frequently,  from  1828 
to  1837,  urged  the  building  of  a  machine  to  cross  the  wool  diago- 
nally, to  which  Mr.  Lownsberry  was  opposed.  The  machine,  how- 
ever, was  built  in  1837,  by  Arnold  and  Akin,  for  the  company,  who 
paid  them  for  building  it.  It  has  always  been  in  possession  of  the 
company,  and  owned  by  them  ;  that  the  machine  is  the  same  spoken 
of  by  Alonzo  C.  Arnold  in  his  deposition,  and  the  model  of  which 
was  sent  to  the  Patent  Office  by  Bishop,  in  March,  1841. 

That  one  objection  to  adopting  the  diagonal  machine  was,  that 
it  would  interfere  with-  a  patent  machine  then  in  operation  at  Cat- 
skill  ;  but  the  right-angled  machine  did  not  interfere,  and  made 
a  better  article. 


JUDGE    CRANCh's    DECISIONS.  523 

That  the  claim  of  Bishop  and  Akin  is  made  for  the  benefit  of  the 
company,  and  that  whether  the  patent  be  taken  out  in  the  joint 
names  of  Bishop,  Akin,  and  Arnold,  or  of  Arnold  alone,  the  benefit 
of  it  is  to  be  assigned  and  transferred  to  the  company  under  certain 
covenants,  entered  into  by  all  of  them,  to  the  company  ;  and  copies 
of  these  covenants  are  filed  with  the  papers  in  this  cause. 

He  does  not  know  who  invented  the  machine  built  by  Arnold  in 
1837,  but  it  is  the  same  mode  which  had  been  agitated  by  Bishop, 
and  occasionally  by  Arnold  during  their  connection  in  business. 
That  Akin  suggested  alterations  while  the  machine  in  1837  was 
putting  up,  and  after  it  was  up,  to  make  it  go  better ;  that  he  did 
the  greater  part  of  the  work  ;  cannot  explain  the  alterations,  nor 
the  ditficulties  to  be  overcome,  but  it  did  not  operate  at  all.  It 
seems  to  me  that  there  is  enough  in  this  deposition  to  show  that 
Mr.  Arnold  was  not  the  sole  inventor  of  the  principle  of  crossing 
the  wool  diagonally,  or  of  the  machine  for  reducing  that  principle 
to  practice  ;  and,  if  not  the  sole  inventor,  he  is  not  entitled  to  a 
patent. 

There  is  no  claim  before  me  upon  this  appeal  but  that  of  Mr.  Ar- 
nold. Bishop  and  Akin  have  not  appealed  from  the  decision  of  the 
Commissioner  rejecting  their  joint  claim. 

It  appears  by  Lownsberry's  deposition  that  the  principle  or  mode 
of  crossing  the  wool  diagonally  was  suggested  and  contemplated 
by  Bishop  and  McLean  before  Arnold  was  employed  by  them  to 
reduce  their  ideas  to  practice.  The  machine  did  not  constitute  the 
whole  invention.  The  next  material  part  of  the  invention  was  the 
principle,  i.  e.,  the  diagonal  motion,  which  was  to  distinguish  this 
machine  from  all  other  felting  machines  ;  and  it  is  the  vibratory  and 
rotary  motions  which  produce  the  diagonal  crossing  of  the  wool, 
which  Mr.  Arnold  claims  as  his  invention,  and  for  which  he  asks  a 
patent.  The  man  who  redilces  to  practice  the  theory  of  another 
who  assists  in  the  reduction  of  it  to  practice,  cannot  be  considered 
as  the  sole  inventor  of  the  machine.  Arnold  would  not  have  made 
the  machine  unless  informed  by  Bishop  of  the  discovery  which  he 
had  made  of  the  effect  of  the  diagonal  crossing  of  the  wool.  The 
invention  consisted  both  of  the  discovery  of  the  principle  and  the 
reduction  of  it  to  practice.  Neither  Bishop  nor  Arnold,  therefore, 
could  be  considered  as  sole  inventor.  It  appears  also  by  the  depo- 
sition of  Henry  Lamb,  taken  by  Mr.  Arnold,  that  the  machine, 
when  first  put  up,  "  would  not  go ; "  that  Akin  went  up  to  remedy 


524  JUDGE  cranch's  decisions. 

the  defect,  and  that  the  witness  afterwards  saw  it  in  operation  in 
the  full  of  1837,  or  spring  of  1838  ;  and  that  he  never  heard  Arnold 
claim  the  patent  right  until  within  a  year. 

I  see  nothing  in  the  deposition  of  Alonzo  C.  Arnold  inconsis- 
tent with  the  facts  stated  by  Mr.  Lownsberry  in  his  deposition  ;  but 
if  there  were,  Alonzo  C.  Arnold  seems,  by  his  own  showing,  to  be 
interested  by  the  promise  of  his  father,  to  give  him  a  share  in  the 
patent  if  it  should  be  obtained  ;  for,  although  afterward,  in  answer 
to  the  leading  question,  he  said  the  agreement  was  abandoned,,  yet 
it  is  evidence  that  in  the  preceding  part  of  his  deposition,  he 
thought  it  depended  upon  his  generosity  whether  he  should  have 
an  interest  in  the  patent  when  obtained.  If  this  interest,  however, 
was  not  sufficiently  certain  to  exclude  his  testimony,  it  cannot  fail  to 
have  some  effect  upon  his  credibility. 

But  he  states  that  the  machine  was  put  in  operation  in  1837,  and 
his  father  never  spoke  with  him  about  getting  the  patent,  now 
applied  for,  until  the  summer  of  1840,  and  after  his  father  had 
ceased  to  be  a  member  of  the  Union  manufactory,  who  claim  the 
benefit  of  the  patent  under  the  agreement  before  mentioned,  if  it 
should  be  obtained  by  either  or  all  of  the  claimants.  It  may  be 
inferred  from  this,  that  so  long  as  he  remained  a  member  of  the 
company  he  did  not  claim  a  sole  right,  or  any  right  to  the  inven- 
tion. Another  strong  argument  that  he  did  not  claim  to  be  the  inven- 
tor during  those  three  years,  results  from  his  suffering  the  machine 
to  be  set  up  and  used  during  that  period,  without  taking  any  steps  to 
secure  a  patent,  when,  by  the  terms  of  the  acts  of  1836  and  1839, 
the  use  of  the  machine,  with  his  consent,  for  two  years  prior  to  his 
application  is  a  bar  to  his  claim. 

That  fact,  indeed,  seems  to  be  a  bar  to  all  their  claims,  and  to  put 
an  end  to  this  controversy  ;  for,  if  a  patent  should  now  be  granted  to 
any  of  them,  and  an  action  should  be  brought  by  the  patentee  for  a 
violation  of  the  patent  right,  it  seems  that  the  defendant  might 
defend  himself  under  the  15th  section  of  the  act  of  1836,  and  the  7th 
section  of  the  act  of  1839,  by  showing  that  the  machine  had  been  in 
public  use,  with  the  consent  of  the  patentee,  for  more  than  two  years 
prior  to  the  application  for  the  patent. 

It  is  suggested  in  the  reasons  of  appeal,  that  if  the  decision  of 
the  Commissioner  is  sustained,  there  does  not  appear  to  be  any 
possible  mode  of  determining  this  question  ;  and  that  it  is  only  by 
granting   the   patent   to   Arnold,  that   the   rights  of  the  individuals 


JUDGE    CRANCh's    DECISIONS.  525 

interested,  and  of  the  public,  can  be  determined  according  to  the 
intention  of  the  acts  of  Congress  for  the  promotion  of  the  useful 
arts. 

But  upon  comparing  the  16th  section  of  the  act  of  1836  with  the 
10th  section  of  the  act  of  1839,  it  will  appear  that,  "  in  all  cases 
where  patents  are  refused,  for  any  reason  whatever,  either  by  the 
Commissioner  of  Patents,  or  by  the  chief  justice  of  the  District  of 
Columbia,  upon  appeals  from  the  decision  of  said  Commissioner," 
the  "  applicant  may  have  remedy  by  bill  in  equity ;  and  the  court 
having  cognizance  thereof,  on  notice  to  adverse  parties,  and  other 
due  proceedings  had,"  "  may  adjudge  that  such  applicant  is  entitled, 
according  to  the  principles  and  provisions  of  the  act  of  1836,  to 
have  and  receive  a  patent,  for  his  invention,  as  specified  in  his 
claim  ;  "  "  and  such  adjudication,  if  it  be  in  favor  of  the  right  of 
such  applicant,  shall  authorize  the  Commissioner  to  issue  such  patent 
on  his  filing  a  copy  of  the  adjudication,  and  otherwise  complying 
with  the  requisitions  of  that  act. 

The  reservation  of  a  right  to  a  further  hearing  on  the  part  of  Mr. 
Arnold's  attorney,  was  confined  to  the  case  of  my  admitting  the 
evidence  which  he  objected  to;  and,  as  I  have  rejected  that  evidence, 
any  further  hearing  is  unnecessary. 

Upon  the  whole,  then,  after  rejecting  the  evidence,  I  am  of 
opinion  that  Mr.  Arnold  has  not  supported  his  claim  as  sole  in- 
ventor ;  and  that  if  he  had,  he  has  lost  his  right  to  a  patent,  by 
suffering  the  machine  to  be  in  use  for  more  than  two  years  before 
his  application  for  a  patent ;  and  that,  therefore,  and  upon  both 
grounds,  the  decision  of  the  Commissioner  of  Patents,  rejecting 
his  claim,  ought  to  be,  and  it  is  hereby   affirmed. 

W.  CRANCH. 

Octoher  29,  1841. 

Subsequent  to  this  decision  of  the  honorable  judge,  he  transmitted 
a  second  opinion  to  the  office,  in  the  following  words : 

John  Arnold,  appellant, 

vs.  I  Appeal  from  the  decision  of  the  Com- 

George   G.  Bishop   and  [  missioner  of  Patents. 

John  Akin,  appellees.    J 

After  I  had  sent  my  opinion  in  this  case  to  the  Commissioner  of 
Patents,  on  the  30th  of  October  last,  I  was  satisfied  that  I  had  mis- 


526  JUDGE  cranch's    decisions. 

apprehended  the  attorney  of  Mr.  Arnold,  in  supposing  that,  in 
case  I  should  sustain  his  objections  to  the  testimony  and  evidence 
on  the  part  of  the  appellees,  he  would  not  desire  to  be  further 
heard,  I  therefore  determined  to  hear  his  further  argument,  on  the 
20th  instant,  at  my  chambers,  of  which  I  gave  notice  to  the  attorneys 
of  the  parties,  and  they  attended,  viz  :  Doctor  Jones  on  the  part  of 
the  appellant,  and  Mr.  Morfit  on  the  part  of  the  appellees.  Mr.  Fitz- 
gerald also  attended  on  behalf  of  the  Patent  Office,  to  give  any 
explanations,  &c.,  which  might  be  required.  Doctor  Jones  then  pre- 
sented his  further  argument,  in  writing,  in  which  he  contended  that 
this  claim  of  Mr.  Arnold  for  a  patent  is  not  included  in  the  cove- 
nant to  the  Union  Manufacturing  Company,  of  which  Mr.  Lowns- 
berry  is  a  member  ;  and,  therefore,  that  the  interest  of  Mr.  Lownsberry 
"  cannot  be  the  same  whether  the  patent  should  be  granted  to  Arnold 
or  to  the  three  applicants." 

I  cannot,  however,  perceive  how  that  consequence  should  follow. 
It  is  only  by  introducing  the  assignments  and  covenants  by  Mr. 
Arnold  to  the  Union  Manufacturing  Company,  and  by  showing  that 
these  covenants  cover  this  claim,  that  Mr.  Lownsberry  is  supposed  to 
be  interested. 

If  those  covenants  do  not  cover  this  claim,  then  Mr.  Lownsberry 
is  not  interested;  and  if  they  do,  then,  as  all  the  applicants  are 
bound  by  similar  covenants,  it  is  not  material  to  him  which  pre- 
vails. 

The  only  question  for  me  to  decide  is  that  which  is  suggested  by 
the  reasons  of  appeal,  viz  :  whether  Mr.  Arnold  was  the  sole  inventor 
of  the  machine. 

To  that  question  it  is  wholly  immaterial  whether  it  be  an  entirely 
new  machine,  or  an  improvement  upon  an  old  one. 

Upon  a  careful  review  of  the  depositions  of  Alonzo  C.  Arnold, 
Mr.  Waters,  and  Mr.  Lamb,  taken  on  the  part  of  the  appellant, 
and  of  that  of  Mr.  Lownsberry,  on  the  part  of  the  appellee,  I  am 
still  of  opinion  that  Mr.  Arnold  has  not  supported  his  claim  as  sole 
inventor. 

But  it  is  suggested  that  there  is  no  law  which  authorizes  the  Com- 
missioner of  Patents  to  withhold  the  grant  of  a  patent,  in  the  case 
in  question,  that  is,  where  the  applicant  is  not  the  sole  inventor  ; 
that  it  is  not  one  of  the  grounds,  stated  in  the  7th  section  of  the 
act  of  1836,  which  would  justify  the  Commissioner  in  refusing  the 
patent ;  and  that  the  only  one  of  these  grounds  which  can  be  sup- 


JUDGE    CRANCH  S     DECISIONS.  527 

posed  to  apply  to  this  case  is,  its  appearing  to  the  Commissioner 
that  the  same  thing  had  been  invented  or  discovered  by  some  other 
person  prior  to  the  alleged  invention  or  discovery  by  the  applicant. 

But  by  the  sixth  section  of  the  same  act,  the  applicant  must  be 
the  inventor.  One  of  the  three  joint  inventors  cannot  with  pro- 
priety be  called  the  inventor  ;  and  if  he  applies  for  the  patent,  the 
Commissioner  is  bound  to  refuse  it.  This  seems  to  be  admitted  in 
the  reasons  of  appeal,  where  it  is  said  that  Arnold,  who  has  sworn 
that  he  was  the  original  and  first  inventor,  cannot,  without  admitting 
that  he  has  been  guilty  of  perjury,  acknowledge  that  Bishop  and 
Akin  were  joint  inventors  with  him  ;  and  that,  upon  their  own  show- 
ing, a  patent  cannot  be  granted  to  Bishop  and  Akin  without  the  con- 
currence of  Arnold. 

Here,  then,  is  the  authority  of  the  Commissioner  to  withhold  a 
patent  from  an  applicant  who  is  not  the  sole  inventor. 

In  my  former  opinion  in  this  case,  I  stated  as  one  of  the  grounds 
for  affirming  the  decision  of  the  Commissioner  of  Patents  rejecting 
the  claim  of  Mr.  Arnold,  that  he  had  lost  his  right,  if  he  had  any,, 
by  suffering  the  machine  to  be  in  use  for  more  than  two  years  be- 
fore his  application  for  a  patent.  I  should  have  said  "  public 
use,"  which  are  the  words  of  the  statute.  But,  upon  reflection,  I 
doubt  whether  I  can  decide  upon  any  other  matter  than  that  which 
arises  upon  the  reasons  of  appeal.  The  words  of  the  act  of  1839, 
section  eleven,  which  confer  the  jurisdiction  upon  the  judge,  after 
allowing  the  applicant  a  right  to  appeal,  by  giving  notice  thereof 
to  the  Commissioner,  filing  his  reasons  of  appeal,  and  paying  into 
the  office  twenty-five  dollars  to  the  credit  of  the  patent  fund,  are  : 
"  and  it  shall  be  the  duty  of  the  said  chief  justice,  on  petition,  to 
hear  and  determine  all  such  appeals,  and  to  revise  such  decisions 
in  a  summary  way,  on  the  evidence  produced  before  the  Commis- 
sioner, at  such  early  and  convenient  time  as  he  may  appoint,  first 
notifying  the  Commissioner  of  the  time  and  place  of  hearing ;  whose 
duty  it  shall  be  to  give  notice  thereof  to  all  parties  who  appear  to 
be  interested  therein,  in  such  manner  as  said  judge  shall  prescribe. 
The  Commissioner  shall  also  lay  before  the  judge  all  the  original 
papers  and  evidence  in  the  case,  together  with  the  grounds  of  his 
decision,  fully  set  forth  in  writing,  touching  all  the  points  involved 
in  the  reasons  of  appeal  to  which  the  kevision  shall  be  con- 
fined," i.  e.,  the  revision  by  the  judge  shall  be  confined  to  the 
points  involved  in  the  reasons  of  appeal.     He  is  to  "  hear  and  de- 


5'28  JUDGE  cranch's   decisions. 

termine  such  appeals,^''  but  he  is  to  revise  the  decision  of  the  Com- 
missioner only  in  respect  to  the  points  involved  in  the  reasons  of 
appeal.  If  the  Commissioner  did  not  err  in  tJiose  points,  his  deci- 
sion upon  those  points  must  be  affirmed,  although  the  judge  should 
be  of  opinion,  upon  the  evidence  and  the  merits  of  the  whole  case, 
that  the  ^patent  ought  to  have  been  granted  ;  so,  if  the  judge  should 
reverse  the  decision  of  the  Commissioner  upon  those  points,  it  would 
seem  that  the  patent  must  issue,  although  the  judge  should  be  of  opin- 
ion that  upon  the  whole  case,  as  it  appears  in  evidence  before  him, 
the  patent  ought  not  to  issue.  I  say  this  would  seem  to  be  the  effect 
of  such  a  decision ;  because  the  effect  of  such  a  decision  upon  the 
further  proceedings  of  the  Commissioner  would  depend  upon  the 
question,  whether  the  reasons  of  appeal  thus  affirmed,  by  the  judge, 
involved  the  merits  of  the  case.  If  they  did  not,  the  Commissioner 
might  well  say  :  it  is  true,  I  erred  in  those  points,  but  my  objections 
to  the  issuing  of  the  patent  still  ^xist  untouched  by  the  decision  of  the 
judge.  The  words  of  the  act  are,  that  the  judge's  decision  "  shall 
gorej'n  the  further  proceedings  of  the  Commissioner  in  such  case.'''' 
This  must  apply  only  to  so  much  of  the  case  as  is  involved  in  the 
reasons  of  appeal ;  and  the  appeal  itself  can  be  considered  only  as  an 
appeal  to  so  much  of  the  decision  of  the  Commissioner  as  is  effected 
by  such  reasons.  If,  therefore,  after  the  judge  shall  have  decided  in 
favor  of  the  applicant  upon  the  points  involved  in  his  reasons  of 
appeal,  other  sufficient  reasons  remain  for  rejecting  the  claim  for  a 
patent,  untouched  by  the  decision  of  the  judge,  it  would  seem  that 
the  Commissioner  might  properly  still  reject  it. 

W  hether  such  new  rejection  would  be  subject  to  appeal,  is  a  ques- 
tion which  may  be  left,  as  well  as  the  effect  of  the  judgment  of  the 
judge  in  regard  to  the  subsequent  proceedings  of  the  Commissioner, 
to  future  decision,  as  cases  may  arise  requiring  a  decision  upon  those 
points.  For  these  reasons,  I  doubt  very  much,  whether  it  was  com- 
petent for  me  to  decide  in  this  case,  that  Mr.  Arnold  has  lost  his  right 
to  a  patent  by  suffering  the  machine  to  be  in  public  use  for  more  than 
two  years  before  his  application  for  a  patent.  So  much,  therefore, 
of  my  former  opinion  in  this  case  may  be  considered  as  extra  judicial 
and  as  withdrawn.  This  renders  it  unnecessary  to  answer  the  very 
ingenious  argument  of  Mr.  Arnold's  attorney  upon  that  point ;  which 
argument,  however,  has  not  in  any  degree  diminished  my  confidence 
in  the  correctness  of  the  opinion  which  I  have  thus  withdrawn.  This 
withdrawal  does  not  in  any  manner  affect  the  judgment  which  I  cer- 


John  Arnold,  appellant, 

vs. 

Geo.  G  Bishop  and  John 

Akin,  appellees. 


JUDGE     CRANCh's    DECISIONS.  529 

tified  on  the  29th  of  October,  1841,  inasmuch  as  I  am  still  of  opinion 
that  Mr.  Arnold  has  not  supported  his  claim  as  the  sole  inventor  of 
the  machine  for  which  he  claims  a  patent. 

The  judgment,  therefore,  rendered  by  me,  and  certified  on  the 
29th  of  October  last,  must  stand  as  my  final  decision  in  the  case. 

W.  CRANCH. 

November  25,  1841. 

Judgment  in  the  Case. 
DisTKiCT  OF  Columbia,  to  wit : 

,  Upon  appeal  from  the  Commissioner  of 
Patents,  rejecting  the  application  of 
John  Arnold  for  a  patent  for  his  inven- 
tion of  "  a  new  and  useful  machine  for 
forming  the  web  of  felt  cloth,  and  web 

J       for  other  purposes." 

I,  William  Cranch,  chief  justice  of  the  District  of  Columbia,  certify 
to  the  honorable  the  Commissioner  of  Patents,  that  on  the  4th  IMonday 
of  October,  1841,  the  day  appointed  by  me  therefor,  the  parties 
appeared  before  me,  nameh'^ :  the  said  John  Arnold,  by  his  attorney. 
Dr.  Thomas  P.  Jones,  and  the  said  appellees,  by  Mr.  Morfit,  and  sub- 
mitted the  said  case  to  my  consideration,  upon  the  petition  of  the  said 
John  Arnold  and  the  statement  of  the  reasons  of  appeal,  and  upon  the 
original  papers  and  evidence  in  the  case,  and  the  grounds  of  the 
Commissioner's  decision  therein  fully  set  forth  in  writing,  touching 
all  the  points  involved  in  the  reasons  of  appeal  ;  and  that  the  same 
having  been  duly  considered, 

I  do  decide  and  adjudge,  that  the  decision  of  the  said  Commis- 
sioner of  Patents,  rejecting  the  application  of  the  said  John  Arnold 
for  a  patent  for  the  invention  aforesaid,  be,  and  the  same  is  hereby, 
affirmed  ;  and  I  herewith  return  all  the  papers  in  the  cause. 

W.  CRANCH. 

Washington,  October  29,  1841. 


45 


530  judge   cranch  s  decisions. 

At  Chambers,  Nov.  21,  1842. 
Ralph  Pomeroy,  appellant, | 
Alex.  Connison,  appellee,) 

Alexander  Connison  applied  for  a  Patent. 

The  Commissioner  of  Patents  being  of  opinion  that  the  patent 
applied  for  would,  if  granted,  interfere  with  a  prior  unexpired  patent 
to  Ralph  Pomeroy,  granted  on  the  24th  of  January,  1841,  gave  him 
notice  thereof,  under  the  8th  section  of  the  act  of  July  4,  1836,  chap. 
357,  vol.  8,  p.  549,  and  he  appeared  before  the  Commissioner  of 
Patents  and  contested  the  right  of  Mr.  Connison,  who  claimed  to  be 
the  first  inventor.  The  Commissioner,  on  the  25th  of  July,  1842, 
decided  "  that  a  patent  ought  to  issue  to  Alexander  Connison,  as  the 
first  original  inventor,  and  that  the  same  be  accordingly  issued,  unless 
an  appeal  be  entered  within  ten  days." 

From  this  decision  Mr.  Pomeroy  appealed,  and  filed  his  reasons  of 
appeal. 

The  Commissioner  has  laid  before  the  Judge  the  grounds  of  his 
decision  in  writing,  with  the  original  papers,  and  the  evidence  in  the 
cause. 

The  first  question  is,  has  the  Judge  jurisdiction  upon  this  appeal 
from  the  decision  of  the  Commissioner,  not  rejecting  but  granting 
the  application  .' 

In  no  other  case  under  the  patent  laws  can  an  appeal  be  taken 
from  the  decision  of  the  Commissioner,  unless  the  application  for  a 
patent  has  been  rejected  by  him. 

In  no  other  case  can  an  appeal  be  taken  to  the  granting  of  a 
patent ;  and  the  reason  for  giving  an  appeal  from  the  rejection  of  an 
application  for  a  patent,  and  not  giving  an  appeal  from  the  granting 
of  a  patent,  is,  that  the  applicant  whose  application  is  rejected  has  no 
remedy.  He  cannot  go  into  a  court  of  law  or  of  equity  to  obtain  a 
patent ;  nor  can  he  maintain  any  action  for  the  use  of  his  invention. 
But  if  the  Commissioner  should  grant  a  patent  erroneously,  its  valid- 
ity may  be  tried  ;  and  any  person  interested  may  defeat  it  by  a  suit 
at  law  or  in  equity. 

The  general  object  of  giving  an  appeal  under  the  patent  laws, 
therefore,  is  to  correct  the  error  of  the  Commissioner  in  refusing  to 
grant  the  patent  applied  for.  His  error  in  granting  a  patent  is  corrected 
by  the  ordinary  tribunals  of  the  country  ;  and  there  was  no  need  of 
a  special  tribunal  for  that  purpose. 


JUDGE    CRANCH's    DECISIONS.  531 

This  general  object  seems  to  me  to  govern  all  the  provisions  of  the 
laws  upon  this  subject,  and  ought  to  be  taken  into  consideration  in 
their  construction. 

Thus  in  the  7th  section  of  the  act  of  July  4,  1836,  "  if  the  specifi- 
cation and  claim  shall  not  have  been  so  modified  as,  in  the  opinion  of 
the  Commissioner,  shall  entitle  the  applicant  to  a  patent,  he  may  on 
appeal,  and  upon  request  in  writing,  have  the  decision  of  a  board  of 
examiners,"  &c.,  who  may  reverse  the  decision  of  the  Commissioner. 
And  by  the  16th  section,  the  remedy  given  by  bill  in  equity  is  con- 
fined to  the  case  of  two  interfering  patents,  and  to  the  refusal  of  the 
board  of  examiners  to  grant  a  patent.  The  provisions  of  this  section 
are,  by  the  10th  section  of  the  act  of  1839,  extended  to  all  cases 
where  patents  are  refused,  for  any  reason  whatever,  by  the  Commis- 
sioner of  Patents  or  by  the  Judge,  &c. 

The  proceedings  before  the  Commissioner  and  before  the  Judge  by 
appeals  are  all  initiatory  —  all  relating  to  the  question,  whether  a 
patent  shall  issue  ;  they  cannot  effect  a  patent  already  issued.  Such 
are  the  provisions  of  the  act  of  1836,  sections  5,  6,  7,  8,  9,  10,  11, 
12,  and  16,  and  of  the  act  of  1839,  sections  10  and  11. 

There  is  no  section  or  clause  of  either  of  the  acts  which  gives  a 
patentee  a  right  of  appeal  from  the  decision  of  the  Commissioner 
granting  a  patent  to  another  person,  unless  that  right  be  given  by  the 
8th  section  of  the  act  of  1836. 

By  that  section  it  is  enacted  "  That  whenever  an  application  shall 
be  made  for  a  patent,  which,  in  the  opinion  of  the  Commissioner, 
would  interfere  with  any  other  patent  for  which  an  application  may 
be  pending,  or  with  any  unexpired  patent  which  shall  have  been 
granted,  it  shall  be  the  duty  of  the  Commissioner  to  give  notice 
thereof  to  such  applicant,  or  patentee,  as  the  case  may  be;  and  if 
either  shall  be  dissatisfied  with  the  decision  of  the  Commissioner,  on 
the  question  of  priority  of  right  or  invention,  on  a  hearing  thereof,  he 
may  appeal  from  such  decision,  on  the  like  terms  and  conditions  as 
are  provided  in  the  preceding  section  of  this  act ;  and  the  like  pro- 
ceedings shall  be  had  to  determine  which  or  whether  either  of  the 
applicants  is  entitled  to  receive  a  patent  as  prayed  for." 

The  power  and  jurisdiction  given  by  the  patent  laws  to  the  board 

of  examiners  and  to  the  judge  are  special  and  limited,  and  must  be 

construed  and  exercised  strictly.     The  judge   can  only  decide  such 

questions,  and  render  such  judgment  as  he  is  expressly  authorized  by 

.  the  statutes  to  decide  and  render.     In  the  case  stated  in  the  8th  sec- 


532  JUDGE  cranch's  decisions. 

tion  of  the  act  of  1836  the  judge  is  only  "  to  determine  which  or 
whether  either  of  the  applicants  is  entitled  to  receive  a  patent  as 
prayed  for.''''  He  can  only  act  in  a  case  where  there  are  contending 
applicants  for  a  patent,  and  those  applicants  must  have  '•'■  prayed  for  " 
a  patent.  A  patentee  is  not  an  applicant.  He  has  already  obtained 
all  he  asked  for.  If  his  patent  can  be  supported  at  law,  he  has 
nothing  to  fear.  The  grant  of  a  subsequent  patent  erroneously  to 
another  cannot  affect  the  validity  of  his  patent.  The  judge  is  to 
determine  which  or  whether  either  of  the  applicants  is  entitled  "  to 
receive  "  a  patent.  It  would  be  absurd  to  say  that  a  patentee  is  enti- 
tled to  receive  the  patent  after  he  has  already  received  it. 

It  is  true  that  the  8th  section,  after  speaking  of  applicants  and 
patentees,  says,  if  either  shall  be  dissatisfied,  he  may  appeal.  The 
word  "  either  "  may  be  satisfied  by  applying  it  to  the  words  "  such 
applicants  ;  "  i.  e.  "  either  "  of  "  such  applicants.""  And  that  such 
was  the  understanding  of  the  legislature  seems  probable,  from  the 
fact  that  they  have  only  authorized  the  judge  to  determine  between 
contending  applicants,  and  not  between  an  applicant  and  a  patentee  ; 
for  when  they  come  to  say  what  the  judge  is  to  do  upon  the  appeal, 
we  find  it  is  "  to  determine  which  or  whether  either  of  the  applicants 
is  entitled  to  receive  a  patent  as  prayed  for.''''  The  word  "  either  " 
in  the  former  parts  of  the  clause  is  here  explained  to  mean  either  of 
the  applicants.  It  cannot  be  contended  that  the  judge  is  to  decide 
whether  a  patentee  is  entitled  to  receive  a  patent  which  he  has 
already  received,  and  which  he  still  has  in  his  possession. 

This  construction  of  this  section  is  corroborated  by  the  reference 
to  it  in  the  11th  section,  which  gives  a  right  to  file  a  caveat ;  and 
where  it  is  said,  that  "  if  in  the  opinion  of  the  Commissioner  the  spe- 
cifications of  claim  interfere  with  each  other,  like  proceedings  may 
be  had  in  all  respects  as  are  provided  in  the  case  of  interfering  appli- 
cations^'' {i.  e.,  in  the  8th  section.) 

The  16th  section  seems  to  give  the  remedy  in  a  case  of  interfering 
patents,  which  this  will  be  if  the  Commissioner  shall  issue  a  patent  to 
Mr.  Connison.  It  also  provides  for  the  case  where  a  patent  is  refused 
by  the  board  of  examiners,  on  the  ground  that  it  would  interfere  with 
an  unexpired  patent ;  and  the  provisions  of  this  section  are  extended 
by  the  10th  section  of  the  act  of  1839,  to  all  cases  of  refusal  by  the 
Commissioner  or  the  Judge. 

When  the  patent  has  issued,  the  jurisdiction  of  the  Commissioner 
is  exhausted.     He  has  no  further  control  over  it,  except  in  the  case 


JUDGE    CRANCH's     DECISIONS.  533 

provided  for  in  the  13th  section  of  the  act  of  1836,  where  the  patent 
is  inoperative  or  invalid  by  reason  of  a  defective  or  insufficient 
description.  An  adjudication  upon  it  by  the  Commissioner  or  the 
Judge  has  no  effect  upon  a  patent  already  granted,  and  is  entirely 
inoperative  as  to  the  rights  of  the  parties,  unless  the  decision  be 
against  the  applicant^  against  whom  it  would  be  conclusive,  unless 
an  appeal  were  given  by  the  statute.  He  could  apply  to  no  other 
tribunal.  But  as  to  the  patentee,  a  decision  against  Imn  would  be 
a  brutum  fulmen;  and  if  the  second  patentee  should  do  any  act 
under  his  patent  to  the  supposed  injury  of  the  first  patentee,  he 
would  have  a  right  of  action,  and  might  maintain  the  validity  of 
his  patent  in  the  same  manner  and  to  the  same  effect  as  if  the  second 
patent  had  not  issued.  When  the  Commissioner  inquires  as  to  the 
relative  priority  of  invention  between  the  applicant  and  the  patentee, 
it  is  only  for  the  purpose  of  setting  aside  the  patent  already  granted^ 
over  which  he  has  no  control.  The  decision  of  the  Commissioner 
does  not  affect  the  patentee  if  his  patent  is  valid,  and  if  it  is  invalid, 
he  has  no  right  to  complain. 

There  was  no  necessity,  therefore,  that  the  patentee  should  have 
a  right  to  appeal  from  the  decision  of  the  Commissioner,  which 
could  have  no  effect  upon  his  rights.  This  is  a  sufficient  reason 
why  the  legislature  should  not  give  him  a  right  to  appeal  in  such  a 
case.  He  has  already  abundant  means  of  redress,  both  at  law  and 
in  equity,  if  his  patent  is  valid,  and  should  be  violated  ;  and  this 
accounts  for  the  restraining  the  action  of  the  Judge  to  the  case  of 
contending  applicants. 

An  appeal  is  given  to  a  disappointed  applicant,  because  other- 
wise the  decision  of  the  Commissioner  would  be  conclusive  against 
him.  It  is  not  given  to  the  patentee,  because  the  decision  of  the 
Commissioner  is  not  only  conclusive  as  to  him,  but  does  not  in  any 
manner  affect  his  legal  or  equitable  rights  ;  and  if  the  patent  should 
be  issued  to  Mr.  Connison  by  the  Commissioner,  the  act  of  1836,  sec- 
tion 16,  expressly  gives  him  a  remedy  in  equity  where  he  may  have 
the  benefit  of  the  oath  of  the  second  patentee,  in  addition  to  all  legal 
evidence  taken  according  to  the  rules  of  a  court  of  equity,  which  has 
power  and  jurisdiction  to  act  effectually  in  the  case,  and  to  adjudge 
either  of  the  patents  to  be  void  ;  or,  if  he  does  not  like  the  remedy 
by  bill  in  equity,  he  may  bring  an  action  at  law  for  a  violation  of 
his  patent ;  in  which  case,  its  validity  may  be  tried  and  decided. 
In  either  of  these  cases,  his  remedy  is  full  and  conclusive,  whereas 
45* 


534  JUDGE    cranch's  decisions. 

if  he  were  to  have  an  appeal,  he  would  not  thereby  have  any  con- 
clusive or  effectual  remedy,  for,  if  upon  such  appeal  he  should  pre- 
vail in  reversing  the  decision  of  the  Commissioner,  the  reversing 
decision  would  not  be  final  and  conclusive  upon  Mr.  Connison.  He 
would  still  have  his  remedy  upon  a  bill  in  equity,  under  the  same 
16th  section. 

I  am,  therefore,  of  opinion  that  the  legislature  designedly  limited 
the  authority  of  the  judge  to  the  decision  of  the  question,  "  which 
or  whether  either  of  the  applicants  is  entitled  to  receive  a  patent 
as  prayed  for  ;  "  and  that  as,  in  this  case,  there  is  only  one  appli- 
cant, I  have  no  jurisdiction  in  it  under  the  8th  section  of  the  act 
of  1836. 

The  only  other  case  of  appeal  provided  for  in  the  statutes,  is 
where  the  application  for  a  patent  is  rejected  ;  and  as  the  appli- 
cation of  Mr.  Connison  was  not  rejected,  but  sustained,  I  have 
no  jurisdiction  of  the  appeal  of  Mr.  Pomeroy,  who  is  not  an 
applicant. 

Believing  that  I  have  no  jurisdiction  in  this  case,  and  that  Mr. 
Pomeroy  has  all  his  rights  and  remedies  reserved  to  him  by  the 
statutes  upon  this  subject,  I  shall  return  the  papers  to  the  Patent 
Office  with  a  certificate  of  the  substance  of  this  opinion. 

W.   CRANCH. 

November  22,  1842. 


Benjamin  M,  Smith,  appellant   ^  ... 

I  Appeal   from   Commissioner   of 

Flickenger  and  Krim,  appellees.  J  Patents. 

Mr.  Smith  was  an  applicant  for  a  patent  for  a  machine  for  separat- 
ing garlic  from  wheat. 

The  Commissioner  being  of  opinion  that  it  would  interfere  with 
a  patent  already  granted  to  Flickenger  &  Krim,  gave  notice  thereof 
to  the  applicant  and  patentees,  as  required  by  the  act  of  Congress 
of  the  4th  of  July,  1836,  ch.  357,  sec.  8,  and  assigned  the  19th  of 
December,  1842,  for  hearing  the  parties  upon  the  question  of  pri- 
ority of  invention.  Upon  that  day  it  appeared  that  the  depositions 
on  the  part  of  the  applicant,  Mr.  Smith,  were  taken  and  transmitted 
in  due  form,  according  to  the  regulations  which  the  Commissioner 


JUDGE    CRANCH's    DECISIONS.  535 

of  Patents  had  (by  virtue  of  the  12th  sec.  of  the  act  of  Congress 
of  the  3d  of  March,  1839,)  made  "  in  respect  to  the  taking  of  evi- 
dence to  be  used  in  contested  cases  before  him."  The  depositions 
on  the  part  of  the  patentees,  Flickenger  &  Krim,  were  correctly 
taken,  but  not  transmitted  in  the  form  required  by  these  regula- 
tions, and,  therefore,  according  to  the  Commissioner's  4th  rule, 
could  not  be  considered  by  him  upon  the  day  assigned  for  hearings 
touching  the  matter  at  issue.  But  as  it  appeared  to  the  Commis- 
sioner that  the  facts  stated  in  the  depositions  thus  informally  trans- 
mitted would,  but  for  that  informality,  clearly  show  that  the  appli- 
cant was  not  the  first  and  original  inventor,  he  postponed  the  hearing 
to  the  27th  of  February,  1843  ;  of  which  he  gave  to  Mr.  Smith  the 
following  notice  : 

"  Patent  Office,  Becemher  20,  1842. 

"  The  day  of  hearing  in  the  matter  of  interference  between  your 
claims  and  those  of  Messrs.  Flickenger  &  Krim  has  been  postponed 
to  the  27th  of  February,  1843,  the  evidence  on  their  part  being  infor- 
mal in  the  caanner  of  transmission  to  the  Commissioner  of  Patents. 
The  case  is  open  for  the  reception  of  further  evidence  taken  and 
transmitted  according  to  the  rules  in  the  enclosed  circular, 
"  Respectfully,  yours, 

"H.  L.  ELLSWORTH." 

The  circular  referred  to  is  as  follows  : 

"PATENT  OFFICE. 

"  Rules  for  taking  and  transmitting  evidence,  Sfc,  to  the  Commis- 
sioner of  Patents. 

"  1st.  That  all  statements,  declarations,  evidence,  &c.,  shall  be  in 
writing,  setting  forth  minutely  and  particularly  the  point  or  points  at 
issue ;  and  shall  be  verified  by  oath  or  affirmation. 

"  2d.  That  all  statements,  declarations,  proofs,  and  evidence  shall 
be  filed  in  the  Patent  Office  by  the  parties,  respectively,  before  the 
day  of  hearing, 

"  3d.  That  before  the  deposition  of  a  witness  or  witnesses  be 
taken  by  either  party,  notice  shall  be  given  to  the  opposite  party 
of  the  time  and  place  when  and  where  such  deposition  or  deposi- 


536  JUDGE    CRANCH  S    DECISIONS. 

tions  will  be  taken,  so  that  the  opposite  party,  either  in  person  or 
by  attorney,  shall  have  full  opportunity  to  cross-examine  the  wit- 
ness or  witnesses.  And  such  notice  shaU,  with  proof  of  sei^vice  of 
the  same^  be  attached  to  the  deposition  or  depositions,  whether  the 
party  cross-examine  or  not ;  and  such  notice  shall  be  given  in  suffi- 
cient time  for  the  appearance  of  the  opposite  party,  and  for  the 
transmission  of  the  evidence  to  the  Patent  Office  before  the  day  of 
hearing. 

"  4th.  That  no  evidence,  statement,  or  declaration  touching  the 
matter  at  issue  will  be  considered  upon  the  said  day  of  hearing 
which  shall  not  have  been  taken  and  filed  in  compliance  with  these 
rules  :  Provided,  that  if  either  party  shall  be  unable,  from  good  and 
sufficient  reasons,  to  procure  the  testimony  of  a  witness  or  wit- 
nesses within  the  above  stipulated  time,  then  it  shall  be  the  duty 
of  said  party  to  give  nofice  of  the  same  to  the  Commissioner  of 
Patents,  accompanied  with  statements  of  the  cause  of  such  inability, 
which  last  mentioned  notice  to  the  Commissioner  shall  be  received  by 

him days  previous  to  the  day  of  hearing  aforesaid,  viz  :  the 

day  of next. 

"  5th.  That  all  evidence,  &c.,  shall  be  sealed  up  and  transmitted 
to  the  Commissioner  of  Patents  by  the  persons  before  whom  it  shall 
be  taken,  and  so  certified  thereon. 


"  Commissioner  of  Patents.'''' 

At  the  hearing  on  the  27th  of  February,  1843,  the  depositions  on 
the  part  of  the  patentees,  Flickenger  &  Krim,  having  been  regularly 
taken  and  transmitted,  they  were  considered  with  the  other  evidence 
in  the  case  by  the  Commissioner,  who  thereupon  made  the  following 
decision  : 

"  In  the  matter  of  interference  between  the  claims 
of  Benj'n  M.  Smith,  of  Massillon,  Stark  county, 
Ohio,  and  Messrs.  Daniel  Flickenger  and  Se- 
bastian  Krim,  of  Hanover,  York  county,  Penn-  }■  ^  ,  „„  ,„^„  * 
sylvania,  for  an  alleged  improvement  in  sepa- 
rating garlic  from  wheat  by  means  of  elastic 
rollers,  &c.  j 


Feb.  28,  1843. 


"  This  case  came  up  for  hearing  on   the  27th  instant,  and  on 
examination  of  the  evidence  on  the  part  of  Messrs.  Flickenger  and 


JUDGE    CRANCh's    DECISIONS.  537 

Krim,  it  appears  that  he  invented  and  constructed  a  machine  for 
separating  garlic  from  wheat,  by  passing  the  grain  between  elastic 
rollers,  in  the  year  1835.  On  the  part  of  Benj'n  M.  Smith,  it 
appears  that  he  first  invented  a  similar  machine  in  the  year  1837. 
The  testimony  on  both  sides  being  duly  taken  and  transmitted  to  this 
office,  it  is  hereby  decided  that  Messrs.  Flickenger  and  Krim  are 
the  first  and  original  inventors  of  the  said  improvement,  and,  as  such, 
entitled  to  their  patent. 

"  H.  L.  ELLSWORTH." 

From  this  decision  Mr.  Smith  has  appealed,  and  filed  his  reasons 
of  appeal,  with  a  petition  that  it  may  be  heard  and  determined. 

Those  reasons  of  appeal  are  — 

1st.  That  the  Commissioner  could  not  lawfully  postpone  the 
hearing  of  the  case  from  the  19th  of  December,  1842,  to  the  27th 
of  February,  1843,  on  account  of  any  thing  appearing  in  the  depo- 
sitions which  had  been  informally  transmitted  ;  because,  by  the  4th 
of  the  rules  which  he  had  made  in  respect  to  the  taking  of  evi- 
dence to  be  used  in  contested  cases  before  him,  he  had  precluded 
himself  from  considering  any  "  evidence,  statement,  or  declara- 
tion," "  upon  the  day  of  hearing,  which  shall  not  have  been  taken 
and  filed  in  compliance  with  these  rules,"  unless  in  the  case 
provided  for  in  that  rule,  which  case  is  not  applicable  to  these 
patentees. 

The  applicant  contends  that  it  was  his  right  to  have  the  case 
decided  on  the  19th  of  December,  1842,  (the  day  assigned  for  the 
hearing,)  upon  such  legal  and  competent  evidence  as  was  then 
before  the  Commissioner,  who  had  no  authority  to  postpone  the  hear- 
ing without  the  consent  of  the  applicant,  upon  any  ground  appearing 
in  the  depositions  informally  transmitted. 

2.  The  second  reason  of  appeal  is,  "  that  the  appellees  did  not 
give  a  sufficient  time  for  the  appearance  of  the  opposite  party  to 
cross-examine  the  witness,  as  required  by  the  rules  for  taking  evi- 
dence ;  and  therefore  the  deposition  taken  by  the  appellees  on  the 
23d  of  February,  1843,  is  not  legal,  and  should  not  have  been 
entertained  in  deciding  the  case ;  for  the  appellant  would  have 
been  required  to  travel  400  miles  in  three  days  to  appear  at  the 
time  appointed  for  taking  the  evidence,  which  is  obviously  impos- 
sible." 

These  are  all  the  reasons  of  appeal  alleged  by  the  appellant,  and 


538  JUDGE    cranch's   decisions. 

to  these  the  "revision"'  is  expressly  required  to  be  "confined,"  and 
the  appellant  says,  at  the  close  of  his  first  reasons  of  appeal,  that 
he  has  foreborne  to  go  into  the  merits  "  of  the  two  claims  at  this 
time,  because  he  considered  his  right  to  a  patent,  under  the  rules 
as  fully  substantiated,  and  prefers  deciding  the  validity  of  the  former 
patent  before  a  jury." 

The  grounds  of  the  Commissioner's  decision,  which  he  is  required 
by  the  11th  section  of  the  act  of  March  3d,  1839,  fully  to  set  forth 
in  writing,  are  to  be  confined  to  the  points  involved  in  the  reasons  of 
appeal. 

As  to  the  first  reason  of  appeal  —  the  postponement  of  the  hear- 
ing—  he  says  that,  "  upon  examination  of  the  papers,  the  affidavits 
clearly  showed  that  Mr.  Smith  was  not  the  first  and  original  inven- 
tor." That  "  the  affidavits  to  show  this  were  duly  taken,  but  not 
duly  transmitted."  That  this  fact  was  presented  "  to  his  considera- 
tion by  the  examiner,  and  that  having  a  due  regard  to  the  public 
interest,  he  postponed  the  case  to  a  future  day,  giving  both  parties 
the  opportunity  to  procure  further  testimony,  if  they  thought  proper," 
of  which  he  gave  notice  to  Mr.  Smith  by  the  letter  produced  by  him 
with  his  reasons  of  appeal.  That  "  no  motion  of  the  opposite  party 
was  filed  for  postponement,"  and  "  that  he  adopted  that  course  to 
further  the  ends  of  justice," 

As  to  the  second  reason  of  appeal,  that  sufl!icient  time  was  not  given 
to  Mr.  Smith,  the  appellant,  to  be  present  at  the  taking  of  the  depo- 
sition on  the  23d  of  February,  1843. 

The  Commissioner  says  that  "  this  objection  did  not  arise  at  the 
time  of  trial,  and  should  have  then  been  made  ;  but  Mr.  Smith  was 
anxious  to  hasten  rather  than  postpone  the  case,  for  any  cause." 

The  question  arising  upon  the  first  reason  of  appeal  is,  whether 
the  Commissioner  was  bound  to  hear  and  decide  on  the  merits  of 
the  case  upon  the  evidence  which  was  regularly  taken  and  trans- 
mitted to  him,  and  which,  according  to  his  rule  for  taking  and 
transmitting  evidence,  he  could,  on  the  19th  of  December,  1842, 
have  considered  upon  the  hearing  of  the  matter  at  issue,  or  whether 
he  had  a  right  to  postpone  the  hearing,  to  enable  the  patentees  to 
cure  an  informality  in  the  transmission  of  their  evidence,  if  he  should 
deem  such  a  postponement  necessary  to  further  the  ends  of  justice  ; 
giving,  at  the  same  time,  to  both  parties,  an  opportunity  to  procure 
further  testimony. 

The  argument  of  the  appellant  rests  upon  the  construction  of  the 


JUDGE     CRANCH  S    DECISIONS.  539 

fourth  of  the  five  rules  made  by  the  Commrssioner  "  in  respect  to 
the  taking  of  evidence  to  be  used  in  contested  cases  befo/e  him," 
which  rules  were  made  by  virtue  of  the  power  given  him  in  the  12th 
section  of  the  act  of  March  3d,  1839. 

The  4th  rule  is  in  these  words : 

"4th.  That  no  evidence,  statement  or  declaration,  touching  the 
matter  at  issue,  shall  be  considered  upon  the  said  day  of  hearing, 
which  shall  not  have  been  taken  and  filed  in  compliance  with  the 
rule  :  provided,  that  if  either  party  shall  be  unable,  from  good  and 
sufficient  reason,  to  procure  the  testimony  of  a  witness  or  witnesses 
within  the  above  stipulated  time,  then  it  shall  be  the  duty  of  said 
party  to  give  notice  of  the  same  to  the  Commissioner  of  Patents, 
accompanied  with  statements  of  the  cause  of  such  inability  ;  which 
last  mentioned  notice  to  the  Commissioner  shall  be  received  by  him 
ten  days  previous  to  the  day  of  hearing  aforesaid,  viz  :  the 
day  of  next." 

It  is  contended  by  the  counsel  of  the  appellant,  not  only  that  the 
Commissioner  cannot  consider  the  deposition,  informally  transmitted, 
as  evidence  upon  the  hearing  of  the  matter  in  issue,  but  that  he 
cannot  look  into  it  for  any  purpose,  and  therefore  there  was  no 
cause  whatever  for  postponing  the  hearing ;  and  that,  for  that  rea- 
son, the  decision  of  the  Commissioner  upon  the  merits  of  the  case 
ought  to  be  reversed. 

But  the  prohibition  contained  in  the  rule  is  not  to  the  Commis- 
sioner's looking  into  the  deposition  thus  informally  transmitted,  or 
to  his  reading  it  and  ascertaining  its  contents  ;  but  to  his  consider- 
ing it  on  the  day  of  hearing,  as  evidence  touching  the  matter  at 
issue. 

The  Commissioner  does  not  consider  it,  upon  the  day  of  hearing, 
as  evidence  touching  the  matter-  at  issue,  and  in  that  respect  com- 
plied with  his  own  rule. 

The  proviso  in  the  4th  rule  is  applicable  only  to  the  case  where 
the  party  is  unable  to  procure  the  testimony  "  in  sufficient  time  for 
the  appearance  of  the  opposite  party,  and  for  the  transmission  of  the 
evidence  to  the  Patent  Office  before  the  day  of  hearing,  in  which 
case  it  shall  be  the  duty  of  said  party  to  give  notice  of  the  same  to 
the  Commissioner  of  Patents."  But  the  rule  does  not  say  what  the 
Commissioner  shall  do  in  consequence  of  such  notice  —  whether  he 
shall  receive  the  testimony,  although  taken  without  reasonable  notice, 
or  whether  he  shall  postpone  the  hearing  —  so  that  if  the  patentees 


540  JUDGE    cranch's    decisions. 

had  given  such  notice  to  the  Commissioner  he  would  have  still  been 
as  much  without  power  to  postpone  the  hearing  as  he  was  on  the  19th 
of  December,  1842. 

The  notice  therefore  would  have  availed  them  nothing. 

There  is  nothing  in  the  laws  relating  to  the  Patent  Office,  or  in 
the  rules  adopted  by  the  Commissioner,  to  prevent  him  from  postpon- 
ing the  hearing  of  a  cause,  if,  in  his  opinion,  the  justice  of  the  case 
should  require  it,  and  especially  for  the  correcting  of  an  irregularity 
in  matters  of  form.  To  deny  him  this  power,  would  be  to  stifle  jus- 
tice in  her  own  forms. 

2.  As  to  the  2d  reason  of  appeal,  viz  :  that  sufficient  time  was  not 
given  to  Mr.  Smith  to  be  present  at  the  taking  of  the  deposition,  taken 
on  the  23d  of  February,  1843,  it  is  a  sufficient  answer  to  say,  that 
the  objection  was  not  made  at  the  hearing  ;  but  it  appears  also  that 
the  notice  was  served  on  Mr.  Smith,  personally,  on  the  11th  of  Feb- 
ruary, at  Massillon,  in  Stark  county,  in  Ohio,  to  take  the  depositions 
of  witnesses  at  Manhime,  in  York  county,  in  Pennsylvania,  on  the 
23d  of  February — eleven  days  —  which  seems  to  be  a  reasonable 
time,  even  if  the  distance  was  400  miles,  as  suggested  in  the  reasons 
of  appeal. 

Upon  the  whole,  therefore,  I  am  of  opinion  that  in  this  case  the 
alleged  reasons  of  appeal  are  not  sufficient  to  sustain  it,  and  that 
the  decision  of  the  Commissioner  of  Patents,  as  to  all  the  points 
involved  in  the  said  reasons,  must  be  affirmed.  W.  CRANCH. 

March  25,  1843. 

Benjamin  M.  Smith,  appellant,  i  Upon   appeal   from    the  decision 
vs.  y     of  the   Commissioner    of    Pa- 

Flickenger  and  Krim,  appellees,  J      tents. 

I,  William  Cranch,  chief  justice  of  the  District  of  Columbia,  certify 
to  the  Hon,  H.  L.  Ellsworth,  Commissioner  of  Patents,  that  I  have 
considered  the  reasons  of  appeal  filed  by  the  applicant  in  this  cause, 
and  the  grounds  of  the  decision  of  the  said  Commissioner  upon  the 
points  involved  in  the  said  reasons,  and  have  heard  and  considered 
the  argument  of  the  attorney  of  the  applicants. 

Whereupon  I  do  decide  and  adjudge  that  the  said  decision  of  the 
said  Commissioner  of  Patents,  upon  the  points  involved  in  the  said 
reasons  of  appeal,  be,  and  the  same  is  hereby,  affirmed. 

And  I  herewith  return  all  the  papers  in  the  cause,  together  with 
the  reasons  of  my  opinion.  W.  CRANCH. 

Washington,  D.  C,  March  27,  1843. 


1 


JUDGE     CRANCh's    DECISIONS.  541 


John  Cochrane,  appellant, 


vs. 


Henry  Waterman,  appellee. 


Appeal  by  John  Cochrane  from 
the  decision  of  the  Commissioner 
of  Patents,  refusing  to  grant  liim 
>  a  patent  for  a  machine  for  steering 
vessels,  styled  "  the  spring  tiller 
self-compensating  steering  ma- 
chine." 


By  the  11th  section  of  the  act  of  the  3d  March,  1839,  ch.  88,  the 
reversion  of  the  decision  of  the  Commissioner  is  to  be  "  confined  to 
the  grounds  of  his  decision,  fully  set  forth  in  writing,  touching  all  the 
points  involved  by  the  reasons  of  appeal." 

Mr.  Cochrane  in  his  specification  says  :  "  The  nature  of  my  inven- 
tion consists  in  applying  the  endless  screw  or  worm  working  in  cogs 
on  the  periphery  of  a  quadrant,  to  the  moving  or  holding  of  the  rud- 
der ;  and,  also,  in  the  application  of  springs  to  compensate  for  the 
action  of  the  sea  on  the  rudder." 

The  Commissioner  refused  to  grant  the  patent,  because  as  to  the 
first  supposed  improvement,  namely  :  the  application  of  the  endless 
screw  to  the  cogs  on  the  periphery  of  a  quadrant,  it  was  not  the 
invention  of  an  improvement ;  and  as  the  second  improvement, 
namely :  the  springs  on  the  tiller,  it  would  interfere  with  a  patent 
already  granted  to  Henry  Waterman. 

The  reasons  of  appeal  from  the  decision  are,  in  substance  —  first, 
that  the  application  of  the  endless  screw,  &c.,  is  an  invention  of  an 
improvement  on  the  machinery  of  steering  vessels,  within  the  mean- 
ing of  the  sixth  section  of  the  act  of  the  4th  of  July,  1836,  ch.  375  ; 
and,  secondly,  that  he  was  the  first  inventor  of  the  spring-tiller  ;  and, 
therefore,  the  patent  ought  not  to  have  been  granted  to  Waterman, 
and  ought  now  to  be  granted  to  him,  Cochrane. 

The  Commissioner,  in  stating  his  reasons  for  his  decision,  contends 
that  the  substitution  of  a  known  mechanical  equivalent  is  not  an 
invention  within  the  patent  law  ;  and  I  think  he  is  right.  In  some 
machines  the  moving  power  is  communicated  by  a  band.  If  I  were 
to  substitute  a  pinion  for  the  band,  I  do  not  think  it  could  be  consid- 
ered as  an  invention  for  which  I  could  obtain  a  patent. 

46 


542  JUDGE    CRANCH  3    DECISIONS. 

A. 

Upon  the  first  point,  therefore,  the  decision  of  the  Commissioner  is 
affirmed. 

The  second  question  is,  whether  Mr.  Cochrane  was  the  first 
inventor  of  the  spring-tiller,  according  to  the  evidence  before  the 
Commissioner  ? 

Upon  this  point  it  is  necessary  to  ascertain  what  the  evidence  was. 

1.  James  Cochrane  testifies  in  his  deposition,  taken  on  the  15th  of 
March,  1844,  at  Baltimore,  "  that  he  knows  that  the  compensating 
principle  in  the  steering  machine  was  invented  by  John  Cochrane, 
the  claimant,  by  the  application  of  steel  springs  to  the  rudder,  prior 
to  the  19th  day  of  October,  1835."  He  "heard  him  describe  their 
position  on  the  rudder  and  explain  their  use,  which  was  to  ease  off 
the  action  of  the  sea  on  the  rudder,  previous  to  the  said  19th  of  Octo- 
ber, 1835." 

The  endless  screw  and  wheel  is  a  common  mechanical  power, 
applicable  to  an  indefinite  number  of  machines,  and  the  mere  appli- 
cation of  it  to  a  machine,  to  which  it  had  never  before  been  applied, 
would  not  be  an  invention,  although  it  might  make  the  machine  bet- 
ter than  it  would  have  been  without  it.  There  may  be  innumerable 
cases  in  which  that  mechanical  power  may  be  used  with  great  effect ; 
but  it  does  not  follow  that  the  person  using  it  is  thereby  entitled  to  a 
patent.  The  fact  that  it  enables  the  helmsman  to  hold  and  stay  the 
rudder  with  more  ease,  results  from  the  nature  of  the  power,  and  is 
a  property  belonging  lo  it  wherever  used  ;  for  the  power  of  the 
helmsman  is  applied  slowly  at  the  long  end  of  the  lever  against  the 
power  of  the  rudder,  which  works  at  the  short  end.  This  property  is 
not  now  for  the  first  time  discovered.  The  application  of  it  to  the 
steering  of  vessels  seems  to  be  no  more  entitled  to  a  patent,  than  if  it 
had  been  applied  to  a  kitchen-jack  for  roasting.  It  seems  to  me  to 
be  an  ordinary  power  applied  to  an  ordinary  purpose,  and  that  the 
application  of  it  is  not  an  invention  within  the  meaning  of  the  patent 
law. 

2.  Richard  Cochrane  in  his  deposition,  taken  at  Newark,  New 
Jersey,  March  16th,  1844,  says  :  "  That  the  invention  was  made  in 
the  year  1835,  but  cannot  now  recollect  any  fact  by  which  to  ascer- 
tain in  his  own  mind  the  exact  date."  That  part  of  his  deposition, 
in  which  he  says  that  "  he  distinctly  remembers  that  the  inventor, 
John  Cochrane,  said,  years  ago,  that  it  was  on  the  7th  of  February, 
at  10  o'clock  at  night,"  is  not  competent  evidence  in  this  cause. 


JUDGE    CRANCH's    DECISIONS.  543 

The  deponent  further  testifies  that  he  "  was  present  when  the 
invention  was  made,  and  recollects  that  it  was  at  night."  He  further 
testifies  that,  "  in  the  month  of  October,  1835,  he  had  a  conversation 
with  Captain  Scott,  of  the  brig  Planter,  of  Baltimore,  Maryland,  on 
the  principle  on  which  steering  machines  should  act,  for  the  purpose 
of  ascertaining  whether  the  springs  were  as  important  in  steering  Eis 
the  said  John  Cochrane  supposed  ;  but  that  he,  deponent,  is  certain 
that  this  invention  was  in  existence  before  said  conversation  with 
Captain  Scott."  He  further  testifies  that  "  the  model  deposited  at 
Washington  is  the  same  in  substance  or  principle  as  when  first 
invented  by  John  Cochrane."  The  letter  of  Captain  Bunker,  of  the 
15th  of  February,  1843,  a  copy  of  which  was  enclosed  in  Mr.  John 
Cochrane's  letter  of  the  22d  of  March,  1844,  to  the  Commissioner  of 
Patents,  is  not  evidence  in  this  cause  ;  and,  if  it  were,  it  does  not 
give  any  information  as  to  the  priority  of  invention  of  the  spring- 
tiller. 

All  the  evidence  in  favor  of  the  appellant  upon  that  point  is  con- 
tained in  the  depositions  of  James  and  Richard  Cochrane,  and  they 
do  not  carry  back  the  date  of  the  invention  to  any  certain  time  prior 
to  the  19th  of  October,  1835.  The  only  evidence  of  Henry  Water- 
man's priority  of  invention  of  the  spring-tiller  is  contained  in  the 
deposition  of  Stephen  Waterman,  who  testifies  that  in  April  or  May, 
1835,  he  had  a  conversation  with  his  brother  Henry,  in  relation  to 
the  application  of  springs  to  the  head  of  the  rudder,  and  again  in 
July,  1839  —  "  that,  at  hath  of  said  interviews,  said  Henry  Water- 
man described  to  deponent  his  said  invention,  the  same  as  the  one 
patented  to  him  in  Washington.''''  That  in  February,  1843,  the 
deponent  being  about  to  go  to  Washington,  Henry  Waterman  fuf- 
nished  him  with  a  model  of  his  invention.  That,  being  in  New  York, 
they  called  to  see  Mr.  Cochrane's  model,  and  Henry  Waterman 
showed  his  own  model.  That  the  deponent  asked  Mr.  Halstead,  who 
had  charge  of  Mr.  Cochrane's  model,  how  long  it  had  been  invented  ? 
and  the  deponent  thinks  he  stated  in  reply,  seven  or  eight  years. 
The  deponent  annexes  to  his  deposition  an  original  letter  from  him- 
self to  his  brother  Henry  ;  but  it  is  of  no  importance. 

This  deposition  appears  to  have  been  taken  in  the  presence  of 
Mr.  Cochrane,  and  carries  back  the  date  of  Waterman's  invention  of 
the  spring-tiller*  to  April  or  May,  1835,  whereas  the  date  of  Mr. 
Cochrane's  invention  is  not  carried  back  with  any  degree  of  certainty 
beyond  the   19th  of  October,  1835.     The  Commissioner  of  Patents, 


544  JUDGE  cranch's  decisions. 

therefore,  was  bound,  as  the  case  appeared  in  evidence  before  him, 
to  refuse  to  grant  a  patent  to  Mr.  Cochrane. 

Mr.  Cochrane,  in  stating  the  reasons  of  his  appeal,  has  alleged 
that  Mr,  Waterman  obtained  his  patent  surreptitiously.  There  is  no 
evidence  to  support  this  charge.  The  reasons  of  appeal  are  extended 
at  great  length,  and  for  the  most  part  are  founded  upon  the  assump- 
tion of  facts,  of  which  there  was  no  competent  evidence  before  the 
Commissioner. 

1.  There  is  no  evidence  that  either  of  the  applicants  for  the 
patent  had  reduced  the  invention  of  the  spring-tiller  to  practice.  The 
letter  of  Captain  Bunker  is  not  admissible  evidence. 

2.  There  is  no  evidence  of  the  protest  of  W,  W.  Kingsley  men- 
tioned in  the  reasons  of  appeal. 

3.  There  is  no  evidence  that  in  the  interview  between  the  Water- 
mans  and  Halstead,  in  New  York,  in  1843,  Henry  Waterman  said 
that  he  invented  the  spring-tiller  '■'■four  or  Jive  years  ago,'''  nor  that 
he  had  never  tried  it.  Nor  that  Mr.  Halstead  informed  them  "  that 
this  machine  was  then  on  board  of  two  ships,  namely  :  the  Alabama 
and  the  Vicksburg,  and  was  in  operation  about  six  months,  and  so  far 
appeared  to  answer  well.  Nor  that  "  Mr.  Cochrane  had  been  at 
great  expense  in  maturing  the  invention  and  in  reducing  it  to  prac- 
tice, and  had  it  in  actual  operation."  Nor  that  Mr.  Waterman  had 
bestowed  no  labor  and  gone  to  no  expense  upoii  the  invention. 

4.  There  is  no  evidence  that  Mr.  Waterman  claimed  to  have 
invented  this  application  of  springs,  in  1838  or  1839. 

5.  There  is  no  evidence  that  Stephen  Waterman  protested  "  that 
if  Ellsworth  should  take  back  the  patent  they  would  enter  suit  for 
damages  against  him." 

6.  There  is  no  evidence  that  Richard  Cochrane  had  the  books  of 
the  brig  Planter  examined  to  ascertain  the  date  of  the  conversation 
with  Captain  Scott. 

7.  What  Mr.  John  Cochrane  says,  in  his  reasons  of  appeal,  he  told 
his  brother  Richard,  is  not  evidence. 

8.  There  is  no  evidence  that  James  Cochrane  stated  as  a  reason 
for  fixing  the  date  of  the  invention  before  the  19th  October,  1835, 
that  on  that  day  he  left  Baltimore  to  reside  in  Richmond. 

9.  There  is  no  evidence  that  Stephen  Waterman  stated  in  evidence 
that  Cochrane's  "  machines  were  in  operation." 

10.  There  is  no  evidence  that  Henry  Waterman  was  intentionally 
assisted  by  the  Patent  Office  in  disregarding  the  caveat,  as  insinuated 


JUDGE     CRANCh's     DECISIONS.  545 

I 

in  the  reasons  of  appeal.  Nor  is  there  any  evidence  that  the  evi- 
dence of  one  of  Mr.  Cochrane's  witnesses  was  mutilated,  nor  thai 
any  important  evidence  was  suppressed,  nor  that  a  portion  of  the  evi- 
dence was  passed  over  without  notice,  as  charged  in  the  reasons  of 
appeal. 

All  those  reasons  of  appeal,  therefore,  which  were  founded  on  sup- 
posed facts,  of  which  there  was  no  evidence,  must  be  disregarded. 

The  fact  that  the  patent  to  Mr.  Waterman  was  granted  while  Mr. 
Cochrane's  caveat  was  pending  and  in  force,  does  not  of  itself  vacate 
that  patent,  nor  authorize  the  Commissioner  to  grant  to  Mr.  Coch- 
rane a  patent  unless  he  should  establish  his  priority  of  invention. 

The  Commissioner  could  act  only  upon  the  evidence  before  him  ; 
and  I  can  act  only  upon  the  same  evidence. 

If  Mr.  Cochrane  had  other  evidence,  and  did  not  produce  it,  it  was 
his  own  fault,  or  misfortune  ;  but  perhaps  he  may  yet  file  a  bill 
in  equity  under  the  16th  section  of  the  act  of  Congress  of  the 
4th  of  July,  1836,  and  establish  his  priority  and  obtain  a  patent 
upon  consideration  of  the  reasons  of  appeal,  and  the  reasons  of  the 
Commissioner  of  Patents,  for  his  decision.  I  am  of  opinion  that  the 
decision  is  correct,  and  ought  to  be  affirmed, 

W.  CRANCH. 

November  6,  1844. 

* 

District  of  Columbia,  to  wit : 

I,  William  Cranch,  Chief  Justice  of  the  District  Court  of  the 
United  States  for  the  District  of  Columbia,  certify  to  the  honorable 
the  Commissioner  of  Patents,  that  having  caused  due  notice  to  be 
given  to  the  parties  interested  in  the  application  of  John  Cochrane  for 
a  patent  for  steering  vessels,  and  of  his  appeal  from  the  decision  of 
the  said  Commissioner  refusing  to  grant  the  said  patent,  I  have  con- 
sidered the  reasons  of  the  said  appeal  filed  by  the  said  John  Cochrane 
and  the  grounds  of  the  decision  of  the  said  Commissioner,  upon  the 
points  involved  in  the  said  reasons  of  appeal.  Whereupon  I  do,  this 
7th  day  of  November,  1844,  decide  and  adjudge  that  the  said 
decision  of  the  said  Commissioner  of  Patents,  upon  the  points 
involved  in  the  said  reasons  of  appeal,  be,  and  the  same  is  hereby 
confirmed  ;  and  I  herewith  return  all  papers  in  the  cause. 

W.  CRANCH. 


46' 


546  JUDGE  cranch's  decisions. 


Solomon  C.  Warner, 


Charles  Goodyear. 


Appeal  from  the  decision  of  the  Commis- 
sioner of  Patents  refusing  a  patent  to 
Solomon  C.  Warner,  for  combining  with 
the  metallic  calender  rollers  an  elastic 
endless  apron  and  a  stretching  frame,  for 
manufacturing  corrugated  or  shirred  In- 
dia rubber  goods. 

The  only  material  point  "  involved  in  the  reasons  of  appeal,"  and 
to  which  my  revision  must  be  limited  is,  whether  Solomon  C.  War- 
ner was  the  first  inventor  of  that  combination,  (which  is  the  same 
combination  for  which  Charles  Goodyear  obtained  a  patent  on  the 
9th  of  March,  1844,  upon  a  specification  dated  July,  24,  1843  ;  more 
than  fifteen  months  before  the  application  of  Solomon  C.  Warner ;) 
for  if  he  was  not  the  first  inventor,  it  is  immaterial  to  this  cause 
who  was. 

Upon  this  point  the  Commissioner  of  Patents  has  decided  that  he 
was  not  the  first  inventor ;  and  upon  his  appeal  from  that  decision 
the  question  is  now  brought  before  me,  and  must  be  decided  accord- 
ing to  the  evidence  produced  before  the  Commissioner,  and  now  laid 
before  me. 

That  a  patentable  improvement  in  the  manufacture  of  corrugated 
or  shirred  India  rubber  goods  by  machinery  ^as  been  invented,  is 
admitted  by  both  parties  ;  and,  in  order  to  ascertain  who  was  the 
inventor,  it  seems  to  be  necessary,  first,  to  ascertain  in  what  this 
patentable  improvement  consists.  * 

It  does  not  consist  in  the  whole  machine  nor  in  any  particular  part 
of  it ;  for  neither  the  whole  nor  any  part  of  it  is  new.  The  inven- 
tion consists  only  of  a  new  combination  of  some  known  mechanical 
principles  or  powers.  The  calenders,  the  rollers,  the  endless  apron 
and  the  stretching  frame  are  all  old  instruments,  and,  as  such,  cannot 
be  patented  ;  but  when  a  certain  particular  combination  of  them  pro- 
duces a  new  and  useful  effect  in  the  manufacture,  that  combination 
becomes  the  lawful  subject  of  a  patent. 

Warner's  specification  says,  that  what  he  claims  as  new  is  the 
combining  with  the  metallic  calender  rollers  an  elastic  endless  apron 
and  a  stretching  frame.  Goodyear's  specification  is  in  the  same 
words,  omitting  the  word  metallic. 

The  question  then  is,  was  Solomon  C.  Warner  the  first  inventor  of 
that  combination  } 


JUDGE    CRANCH's    DECISIONS.  547 

A  vast  deal  of  testimony  has  been  taken ;  much  of  it  is  immate- 
rial. The  counsel  for  the  claimant  objects  to  some  of  Mr.  Good- 
year's  witnesses  as  incompetent,  by  reason  of  their  interest.  But. 
there  is  an  agreement,  signed  by  the  counsel  of  the  parties,  dated 
January  9,  1846,  "  that  all  testimony  taken  before Gardi- 
ner, Esq.,  United  States  commissioner,  and Metcalf,  Esq., 

United  States  commissioner,  up  to  and  during  the  9th  of  January, 
1846,  shall  be  heard  and  considered  by  the  Commissioner  of  Pa- 
tents, whether  the  same  be  filed  before  the  twelfth  day  of  January 
instant,  or  not,  rights  reserved  as  to  all  other  testimony  taken  after 
this  date."  All  the  testimony  to  which  the  objection  relates  was 
taken  before  those  commissioners,  or  one  of  them,  and  before  or 
during  the  9th  of  January,  1846.  This  agreement  seems  to  me  to 
be  a  waiver  of  the  objection  to  the  competency  of  the  witnesses, 
whose  testimony  is  thus  agreed  to  be  heard  and  considered.  The 
objection,  however,  may  go  to  their  credit,  and  have  its  due 
weight. 

The  principal  evidence  in  favor  of  the  claim  of  Mr.  Solomon  C. 
Warner  is.  the  inference  drawn  from  the  fact  that  he  made  the  ma- 
chine which  contains  the  combination  for  which  he  desires  to  obtain 
a  patent. 

This  is  prima  fade  evidence  that  he  was  the  first  inventor  of 
that  combination.  This  inference,  however,  is  rebutted  by  the  facts 
that  in  making  that  machine  he  was  working  in  his  trade  as  a  ma- 
chinist, in  the  employment  and  for  the  benefit  of  Mr.  Goodyear,  for 
wages  ;  that  he  did  not  claim  to  be  the  inventor  of  that  combination 
for  a  long  time  after  his  supposed  invention,  but  stood  by  and  saw 
Mr.  Goodyear  apply  for  -and  obtain  a  patent  for  it  without  objection, 
and  did  not  apply  for  a  patent  for  it  as  his  own  invention  until  the  4th 
of  November,  1844,  more  than  18  months  after  his  supposed  inven- 
tion, and  nearly  six  months  after  Goodyear  had  obtained  his  patent 
for  the  same  invention,  and  not  till  Norton  and  Lawrence  had  agreed 
to  secure  him  against  all  costs  and  expenses  to  be  incurred  in  pro- 
'  curing  the  patent.  • 

These  facts  seem  to  me  to  rebut  the  inference  drawn  from  the  fact 
that  Mr.  Warner  was  the  fabricator  of  the  machine  which  contains 
the  combination. 

The  greater  part  of  the  testimony  produced  by  him  is  to  prove  the 
fact  that  he  built  the  machine. 

The  presumption,  from  the  fact  that  Warner  made  the  machine 


548  JUDGE  cranch's  decisions. 

for  Groodyear,  at  his  request,  for  his  benefit,  and  at  his  expense,  is  that 
it  was  itode  according  to  his  direcuons  ;  and  the  burden  of  proof  is 
then  on  Warner,  to  show  that  the  machine  was  not  made  according 
to  his  directions. 

By  a  careful  examination  of  the  testimony,  I  am  satisfied  that  in 
the  fall  of  1842  Mr.  Charles  Goodyear  made  several  experiments, 
combining  the  principle  of  the  calenders,  the  stretching  frame,  and 
the  elastic  apron  passing  through  the  calenders,  with  the  cloth  in- 
tended to  be  corrugated  ;  and  ascertained  that  a  machine  combining 
those  principles,  if  properly  made,  would  effect  the  object  he  has  in 
view,  viz.  :  the  shirring  of  India  rubber  goods  by  machinerj*. 

This  combination,  the  effect  of  which  Mr.  Goodyear  had  thus 
ascertained,  was  reduced  to  practice  by  the  machine  built  by  Solo- 
mon C.  Warner,  at  the  request  or  by  the  order,  and  at  the  expense 
of  Mr.  Goodyear,  so  that  it  was,  in  fact,  Mr.  Goodyear,  and  not 
Mr.  Warner,  who  reduced  the  invention  to  practice. 

Whether  the  apron  should  be  an  endless  or  a  straight  apron  does 
not  affect  the  principle  ;  the  object  was  to  have  an  elastic  matter  pass 
through  the  calenders,  with  the  cloth  intended  to  be  corrugated. 
The  one  may  do  the  work  better  than  the  other,  but  either  of  them 
effects  the  object  intended. 

Mr.  Goodyear's  discovery  or  invention  was  in  the  year  1842.  Mr. 
Warner  claims  only  from  the  spring  of  1843. 

Without  deciding,  therefore,  the  question,  whether  or  not  Mr.  Solo- 
mon C.  Warner  received  his  instructions  from  Mr.  (xoodyear  or  from 
Mr.  Emorj'  Rider,  or  from  any  one  else,  I  am  of  opinion,  from  the 
evidence,  that  Mr.  Solomon  C.  Warner  was  not  the  first  inventor  of 
the  combination  for  which  he  seeks  to  obtain  a  patent. 

W.  CRAXCH. 

July  llth,  1846. 


Joseph  P.  Hazard  ~-,  In  case  of  rejection  of  an  application  for  an 
and  y      improvement  in  the  manufacture    of  shoes 

Henet   R.  Green,  j       and  brogans. 

1,  William  Cranch,  Chief  Justice  of  the  District  Court  of  the 
United  States  for  the  District  of  Columbia,  hereby  certify,  that  on 
the  15th  day  of  May,  in  the  year  1847,  according  to  notice,  I  pro- 
ceeded to  hear  the  appeal  of  Joseph  P.  Hazard  and  Henry  R.  Green 


JUDGE    CRANCH's    DECISIONS.  549 

from  the  decision  of  the  Commissioner  of  Patents,  rejecting  their 
application  for  an  improvement  in  the  manufacture  of  shoes  ;  and 
having  heard  and  considered  the  same,  and  the  appellant's  reasons 
of  appeal,  and  the  grounds  of  the  Commissioner's  decision,  filed  in 
the  office,  — 

I  am  of  opinion,  and  do  determine,  that  the  appellants  are  not 
entitled  to  the  patent  for  which  they  have  applied,  and  that  the  de- 
cision of  the  Commissioner  rejecting  their  application  therefor  be, 
and  the  same  is  hereby,  confirmed. 

Given  under  my  hand  this  15th  of  May,  1847. 

W.  CRANCH. 
To  the  Hon.  Edmund  Burke, 

Commissioner  of  Patents. 


William    Cundell,   appellant,  "j 

} 
ZiBA  Paekhurst,  appellee.     J 

Upon  appeal  by  William  Cundell  from  the  decision  of  the  Com- 
missioner of  Patents,  awarding  priority  of  invention  to  Ziba  Park- 
hurst,  of  the  zigzag  or  pointed  guard  to  be  applied  to  burring 
machines ;  — 

I,  William  Cranch,  Chief  Justice  of  the  district  court  of  the 
United  States  for  the  District  of  Columbia,  certify  to  the  Hon. 
Edmund  Burke,  Commissioner  of  Patents,  that  on  the  24th  of  May, 
1847,  according  to  notice  duly  given,  the  parties  aforesaid  appeared 
before  me,  viz. :  the  said  William  Cundell,  by  Mr.  Keller,  his  attorney, 
and  Mr.  Ziba  Parkhurst,  by  George  Gifford,  Esq,,  his  attorney ;  Mr. 
Fitzgerald  of  the  Patent  Office  was  also  present ;  and  the  said  ap- 
peal was  heard  upon  the  decision  of  the  said  Commissioner  of  Patents, 
and  the  reeisons  of  appeal  filed  in  the  ofiice,  with  the  grounds  of  said 
decision  fully  set  forth  in  writing  touching  all  the  points  involved  in 
tlie  reasons  of  appeal,  and  the  same  being  fully  argued,  heard,  and 
considered,  I  do  adjudge  that  the  said  decision  of  the  said  Commis- 
sioner of  Patents  be,  and  it  is  hereby  affirmed,  and  I  do  determine 
that  the  said  Ziba  Parkhurst  is  entitled  "  to  receive  a  patent  as 
prayed  for.'''' 

I  return  herewith  all  the  papers.     May  24,  1847. 

W.  CRANCH. 

May  28,  1847. 


550  JUDGE    CRANCH  S    DECISIONS. 

Opinion  of  the  Judge. 

William  Cundell,  "^ 

vs.  > 

ZiBA  Parkhurst.    J 

Appeal  from  the  decision  of  the  Commissioner  of  Patents  refus- 
in<T  a  patent  to  William  Cundell,  because  it  interferes  with  an  appli- 
cation by  Parkhurst,  the  prior  inventor  of  the  same  improvement 
of  a  machine  for  cleaning  sheep's  wool  from  burrs,  &c.  The  com- 
missioner having  decided  that  Parkhurst  was  the  first  inventor  of  the 
improvement. 

The  Commissioner's  decision  is  as  follows  : 

"  The  invention  in  dispute  between  the  parties  is  the  application 
of  the  zigzag  or  pointed  guard  to  the  burring  machine.  The  testi-' 
mony  of  James  C.  Johnson  proves  that  the  said  Parkhurst  showed  the 
guard  in  question  as  early  as  the  spring  of  1845  ;  and  none  of  the 
witnesses  testify  to  its  invention  by  the  said  Cundell  earlier  than  the 
summer  of  the  same  year.  Priority  of  invention  is  therefore  decided 
in  favor  of  Ziba  Parkhurst.  This  view  of  the  case  renders  the  deci- 
sions of  the  interlocutory  questions  which  have  been  raised  in  taking 
the  testimony  wholly  unnecessary.     February  2,  1847." 

From  this  decision  Mr.  Cundell  has  appealed  and  assigned  his  rea- 
sons of  appeal  as  follows : 

"  Although  the  witness  referred  to  does  testify  that  Ziba  Parkhurst 
described  to  him  the  improvement  in  question  in  the  spring  of  1845, 
and  at  a  time  anterior  to  the  alleged  invention  of  William  Cundell, 
yet,  it  will  appear  from  the  testimony  on  both  sides  that  this  witness 
erred  in  his  statement  of  the  time  at  which  this  communication  was 
made  to  him,  for  it  is  clearly  proved,  by  the  testimony,  that  this 
improvement  was  made  in  consequence  of  the  imperfect  working  of 
the  original  machine,  and  to  remedy  a  defect  which  was  discovered 
after  this  machine  was  put  in  operation,  and  the  whole  of  the  testi- 
mony shows  that  this  machine  was  not  put  in  operation  until  the 
month  of  July,  1845,  subsequent  to  the  time  at  which  the  witness  tes- 
tifies the  said  improvement  was  described  to  him  by  Parkhurst ;  they 
therefore  submit  that  the  improvement  which  was  the  result  of,  and 
suggested  by  the  defective  working  of  a  machine,  could  not  have  been 
described  before  the  said  machine  was  constructed  and  put  in  opera- 
tion ;  and  that,  therefore,  the  Commissioner  of  Patents  erred  in  giving 


JUDGE    CRANCh's    DECISIONS.  551 

credence  to  the  statement  by  a  witness  of  a  date,  which  all  the  cir- 
cumstances of  the  case,  established  by  the  testimony  adduced  on  both 
sides,  clearly  shows  was  the  result  of  error." 

By  the  act  of  March  3,  1839,  section  11th,  the  Commissioner  of 
Patents  is  to  "  lay  before  the  judge  all  the  original  papers  and  evi- 
dence in  the  case,  together  with  the  grounds  of  his  decision  fully  set 
forth  in  writing  touching  all  the  points  involved  by  the  reasons  of 
appeal,  to  which  the  revision  shall  be  confined." 

The  only  point  involved  in  the  reasons  of  appeal  is  the  date  of  the 
conversation  between  Ziba  Parkhurst  and  Joseph  C.  Johnson,  in 
which  the  former  showed  the  latter  a  drawing  similar  to  exhibit  D,  of 
a  machine  called  a  stripper  or  guard,  to  be  applied  to  burring 
machines.  Mr.  Johnson  thinks  it  was  the  latter  part  of  the  spring  of 
1845,  but  says  he  cannot  name  dates.  He  fixes  the  date,  however, 
by  recollection  of  another  fact,  to  wit :  that  in  May,  1845,  Ziba  Park- 
hurst went  out  to  Erie  county,  Pennsylvania,  and  Ohio,  and  bought 
some  fifty  or  sixty  thousand  pounds  of  wool,  and  drew  upon  John- 
son's house  for  it,  who  sold  it  on  commission  for  him,  and  that  that  is 
his  reason  for  knowing  the  time  ;  and  that  he  saw  the  machine  before 
Ziba  left  for  Erie  county,  Pennsylvania. 

This  witness,  who  is  a  merchant,  appears  to  have  testified  fairly 
and  impartially.  No  attempt  is  made  to  discredit  him,  unless  by 
showing  that  he  has  mistaken  the  date  of  the  conversation.  This  is 
attempted  to  be  done  b^-  proving  facts  supposed  to  be  inconsistent 
with  the  testimony  of  this  witness. 

None  of  the  other  witnesses  carry  the  invention  farther  back  than 
a  few  weeks  after  Stephen  R.  Parkhurst  first  departed  for  England, 
which  appears  to  have  been  about  the  first  of  August,  1845  ;  but  they 
speak  of  the  time  when  the  invention  was  first  applied  to  a  machine 
in  operation,  not  to  the  time  of  the  invention  itself,  which  necessarily 
precedes  it.  There  is,  therefore,  no  irreconcilable  discrepancy 
between  Mr.  Johnson  and  the  witnesses  as  to  the  time. 

But  it  is  said  by  Mr.  Cundell's  counsel  that  the  defects  of  the 
machine,  at  No.  60  Vesey  street,  led  Ziba  to  suggest  the  improve- 
ment, and  that  the  machine  was  not  put  into  operation  in  Vesey 
street  until  the  18th  of  July,  1845.  But  I  have  not  found  any  evi- 
dence that  it  was  the  defect  in  the  working  of  that  particular  machine 
that  suggested  the  improvement.  Other  burring  machines  had  been 
before  in  use,  to  which  the  new  stripper  might  be  an  improvement, 
and  the  defects  of  which  might  have  suggested  the   improvement. 


552  JUDGE    CRANCH  S    DECISIONS. 

Other  circumstances  have  been  given  in  evidence  tending  to  throw 
some  doubts  as  to  the  time  of  the  invention,  but  none  which,  in  my 
opinion,  outweigh  the  positive  testimony  of  Mr.  Johnson. 

I  am,  therefore,  of  opinion  that  Ziba  Parkhurst  has  established  his 
priority  of  invention  of  the  zigzag  guard  to  the  burring-machine, 
and  is  entitled  to  a  patent  therefor ;  and  that  the  decision  of  the  Com- 
missioner of  Patents  be  affirmed.  W.  CRANCH. 

May  27,  1847. 


District  of  Columbia,  to  icit 


Alonzo  D.  Perry,  appellant, 

vs.  )■ 

Samuel  G.  Cornell,  appellee 


"J  Upon  appeal  from  the  Commis- 
sioner of  Patents,  awarding  pri- 
ority of  invention  to  Samuel  G. 
Cornell,  of  his  invention  of  an 
improvement  in  the  machine  for 

3       the  manufacture  of  lead  pipes. 

I,  William  Cranch,  chief  justice  of  the  district  court  of  the  United 
States  for  the  District  of  Columbia,  certify  to  the  Hon.  Edmund 
Burke,  Commissioner  of  Patents,  that  on  the  21st  day  of  June,  1847, 
according  to  notice  duly  given,  the  parties  appeared  before  me, 
namely  :  the  said  Alonzo  D,  Perry,  by  Mr.  Keller,  his  attorney,  and 
the  said  Samuel  G.  Cornell,  by  Mr.  Stoughton,  his  counsel  ;  Mr. 
Fitzgerald,  of  the  Patent  Office,  being  also  present;  and  the  said 
appeal  was  heard  before  me  at  my  chambers  in  the  City  Hall,  in 
Washington,  D.  C,  and  argued  by  counsel  on  the  21st,  22d,  23d  and 
24th  of  June  aforesaid,  upon  the  decision  of  the  said  Commissioner 
of  Patents,  and  the  reasons  of  appeal  filed  in  the  office,  with  the 
grounds  of  the  said  decision  fully  set  forth  in  writing,  touching  all 
the  points  involved  in  the  reasons  of  appeal,  and  the  evidence  pro- 
duced before  the  said  Commissioner  ;  and  the  same  being  fully 
heard,  argued,  and  considered,  I  do,  this  7th  day  of  July,  1847, 
adjudge  and  determine  that  the  said  decision  of  the  said  Commis- 
sioner of  Patents,  awarding  priority  of  invention  to  the  said  Samuel 
G.  Cornell,  be,  and  the  same  is  hereby  affirmed,  and  that  he  "  is 
entitled  to  receive  a  patent,  as  prayed  for."  W.  CRANCH. 

I  return  all  the  papers. 

W.  C. 


JUDGE     CRANCh's     DECISIONS.  553 


A.  D.  Perry,  appellant,    ^ 

vs.  [^  Appeal  from  Commissioner  of  Patents. 

S.  G.  Cornell,  appellee.  J 

The  first  reason  of  appeal  is,  that  the  evidence  does  not  show  Cor- 
nell to  be  the  first  to  conceive  the  idea  of  a  machine  such  as  he  now 
claims. 

The  question,  therefore,  is,  what  is  the  evidence  ? 

The  counsel  for  Mr.  Perry  offered  to  the  Commissioner  of  Patents 
the  depositions  of  Robert  J.  Craig,  and  twenty  other  witnesses,  taken 
without  notice  to  this  applicant,  Samuel  G.  Cornell.  These  deposi- 
tions, therefore,  cannot  be  used  against  him,  unless  he  has  waived 
his  right  to  notice,  and  agreed  to  admit  them  to  be  read  in  evidence 
before  the  Commissioner  of  Patents.  It  is  suggested  that  the  notice 
given  by  Mr.  Cornell's  counsel  to  the  other  parties  litigant,  to  produce 
these  depositions  to  a  Commissioner  for  inspection  and  examination 
by  his  counsel,  and  the  offer  by  Mr.  Perry  to  have  the  witnesses  again 
before  the  Commissioner,  to  be  cross-examined  by  Mr.  Cornell's 
counsel,  and  his  refusal  to  cross-examine  them  when  produced,  was 
equivalent  to  a  waiver  of  notice. 

I  am  not,  however,  of  that  opinion.  Mr.  Cornell  had  a  right  to  be 
present  at  the  direct  examination  in  chief.  But  it  is  said  that  the 
Commissioner  of  Patents  has  received  these  depositions  in  evidence  ; 
and,  as  he  decided  in  favor  of  Cornell,  he  cannot  appeal  upon  that 
ground.  But  the  Commissioner,  in  his  judgment,  says  it  is  unneces- 
sary to  decide  the  question  raised  in  reference  to  the  admissibility  of 
the  evidence,  as  its  rejection  would  not  vary  the  result.  It  is  plain, 
therefore,  that  he  did  not  decide  that  question.  There  is  no  evidence 
that  Mr.  Cornell,  or  his  counsel,  has  ever  agreed  to  admit  these  depo- 
sitions as  evidence  against  him.     They  must,  therefore,  be  rejected. 

Mr.  Keller,  the  agent  of  the  defeated  applicant,  objects  to  my 
hearing  any  argument  by  an  officer  or  counsel  of  the  Patent  Office. 
Heretofore  it  has  been  usual  for  some  officer  of  the  Patent  Office  to 
attend  the  hearings  before  the  judge,  upon  appeals  from  the  judg- 
ment of  the  Commissioner,  and  no  objection  to  that  course  has  been 
taken,  until  this  time.  The  officer  who  attends  is  not  considered  as 
counsel  for  the  Commissioner,  or  for  the  office  ;  and  I  should  think 
he  could  not  with  propriety  be  considered  as  an  advocate  of  either  of 
the  parties  litigant.  I  have  hitherto  considered  him  as  attending  for 
47 


554  JUDGE  cranch's  decisions. 

the  purpose  of  explaining  the  decision  of  the  Commissioner,  and  not 
as  arguing  the  cause  of  either  of  the  litigants.  He  can  only  appear 
as  an  officer  of  the  department ;  as  such  I  shall  always  be  willing  to 
avail  myself  of  his  assistance  in  the  investigation  of  the  truth. 

W.  CRANCH. 
Opinion  given  Tuesday  morning,  June  23,  1847. 


A.  D.  Perry,  appellant,    1  Appeal  from  the  decision  of  the  Commis- 

I       sioner  of  Patents,  awarding  priority  of 

vs.  Y     invention  to  Samuel  G.  Cornell  of  an 

improvement  in  the  machine  for  making 

S.  G.  Cornell,  appellee,  j      ig^d  pipe. 

There  were  four  conflicting  applications  for  a  patent  for  the 
improvement  — 

1st.  By  John  Robertson,  on  the  Qth  of  September,  1846. 
2d.    By  Alonzo  D.  Perry,  on  the  6th  of  October,  1S46. 
^d.    By  Stephen  Parks,  Jr.,  on  the  12th  of  November,  1846,  and 
4th.  By  Samuel  G.  Cornell,  on  the  21st  of  December,  1846. 

Before  the  application  of  Samuel  G.  Cornell,  and  while  the  litiga- 
tion was  going  on  between  the  other  three  applicants,  the  depositions 
of  twenty-one  witnesses  had  been  taken  on  the  part  of  those  appli- 
cants, respectively,  and,  of  coui'se,  without  notice  to  Mr.  Cornell, 
who  had  not  then  made  his  application.  These  depositions  were 
returned  to  the  Commissioner  of  Patents,  and  objected  to  by  Mr.  Cor- 
nell's counsel  for  want  of  notice. 

The  Commissioner,  without  deciding  upon  the  question  of  the 
admissibility  of  the  evidence  as  to  Mr.  Cornell,  awarded  to  him  the 
priority  of  invention,  saying,  "  the  decision  of  the  question  raised  in 
reference  to  the  admissibility  of  testimony  is  unnecessary  to  decide  ; 
its  rejection  would  not  vary  the  result ;  the  testimony  is  therefore 
received,  and  priority  of  invention  awarded  to  Samuel  G.  Cornell." 
(March  24,  1847.) 

From  this  decision  Mr.  Peny  has  appealed,  and  his  reasons  of 
appeal  are  in  effect  — 

1st.  That  the  evidence  does  not  show  that  Mr.  Cornell  was  the  first 
to  conceive  the  idea  of  a  machine  such  as  he  now  claims,  but  that 
the  plan  proved  to  have  been  so  conceived  is  essentially  different  and 
mechanically  inferior  to  the  one  claimed  and  now  awarded  to  him  by 
the  Commissioner. 


JUDGE     CRANCH  S    DECISIONS.  555 

2d.  That  the  evidence  on  which  the  decision  in  favor  of  Mr.  Cor- 
nell is  based  is  contradictory  and  insufficient  to  establish  his  claim 
even  to  the  conception  of  the  idea  of  the  principle  or  mode  of  ope- 
ration of  the  machine  now  sought  to  be  patented,  but,  on  the 
contrary,  shows  that  the  plan  said  to  have  been  conceived  was  entirely 
different ;  and 

3d.  That  if  he  did  conceive  the  idea  of  the  principle  or  mode 
of  operation  of  a  machine  substantially  similar  to  the  one  now 
claimed,  and  did  describe  to  the  witness  such  a  machine  prior  to  the 
date  of  the  invention  claimed  by  the  applicant.  Perry,  yet  it  was 
merely  an  intellectual  invention,  based  in  theory,  and  not  an  inven- 
tion in  the  meaning  of  the  law. 

The  Commissioner  has  laid  before  me  "  the  original  papers  and 
evidence  in  the  case,  together  with  the  grounds  of  his  decision, 
fully  set  forth  in  writing,  touching  all  the  points  involved  by  the 
reasons  of  appeal,"  to  which  my  revision  must  be  confined  as  pro- 
vided in  the  11th  section  of  the  act  of  March  3d,  1839,  c.  88, 
(pamphlet  edition,  pp.  75  and  76.) 

The  grounds  of  the  decision  of  the  Commissioner,  as  set  forth  in 
writing,  are  in  substance  — 

"  That  it  is  proved  by  the  testimony  of  Wm.  Frost,  confirmed  by 
that  of  Benjamin  Peck,  that  the  said  Cornell  invented  the  machine  in 
dispute  as  early  as  the  summer  of  1843  ;  and  there  is  no  testimony 
that  tends  to  show  that  either  of  the  other  parties  invented  it  until  a 
considerable  time  afterwards." 

That  "  it  appears  by  the  testimony  of  Frost  that  Cornell  described 
the  machine  to  him  fully,  so  that  he  perfectly  understood  it; 
that  he  repeatedly  made  draughts  representing  it  in  so  clear  a 
manner  that  the  said  Frost  was  able  to  make  draughts  and  esti- 
mates of  its  cost,  and  absolutely  did  make  both  with  the  assistance  of 
Cornell." 

That  "  Cornell^  made  the  invention  as  clearly  understood  as  if 
the  machine  had  been  built  and  in  operation."  "  It  appears,  there- 
fore, that  Cornell  had  done  all  that  an  inventor,  as  such,  could  do, 
and  nothing  remained  to  complete  the  machine,  but  the  labor  of  the 
mechanic,  which  cannot  be  confounded  with  invention."  "  The 
daily  number  of  inventions  daily  patented  have  never  been  reduced 
to  practice." 

In  the  grounds  of  his  decision,  the  Commissioner  controverts  the 
dictum  found  in  some  of  the  books,  that  "  he  who  first  reduces  an 


556  JUDGE  cranch's   decisions. 

invention  to  practice,  is  the  first  inventor  :  "  a  dictum  which,  he 
says,  "  although  often  quoted  and  reiterated,  was  not  applicable  to, 
nor  borne  out  by,  the  case  in  which  it  was  first  pronounced,  nor  by 
any  of  the  cases  in  which  it  has  subsequently  been  repeated  ;  and 
which,  in  the  broad  terms  in  which  it  is  announced,  is  not,  and 
never  has  been,  the  law.  If  by  reduction  to  practice  is  meant  ren- 
dering  a  principle  practicahJe  or  useful  in  a  new  icay,  and  clearly 
pointed  out  the  manner  in  which  it  may  be  thus  made  useful,  so 
that  any  competent  mechanic  can  avail  himself  of  it,  then,  and  in 
that  sense,  an  invention  must  be  reduced  to  practice  ;  "  but  "  neither 
the  statutes,  nor  the  decisions  of  the  courts,  require  that  a  machine 
should  be  built  and  used  as  a  part  of  the  invention,  and  before  the 
party  can  be  considered  an  inventor  ;  but  that  the  sense,  above  al- 
luded to,  is  the  sense  in  which  the  courts  have  used  the  phrase  reduc- 
tion to  practice ;  "  and  the  only  sense  which  will  reconcile  the 
"  decisions,  and  make  them  conform  to  the  statutes  regulating  patent 
rights." 

The  other  two  applicants,  Mr.  Robertson  and  Mr.  Parks,  have 
not  appealed  ;  so  that  the  contest  is  now  between  Mr.  Perry  and 
Mr.  Cornell  only. 

It  is  admitted  that  a  great  and  valuable  improvement  has  been 
made  in  the  old  machine  for  making  lead  pipes  ;  and  the  principal, 
if  not  the  only  point  involved  in  the  reasons  of  appeal  is  the  ques- 
tion—  "Which,  or  whether  either  of  these  two  applicants  is  enti- 
tled to  receive  the  patent  prayed  for ;  "  and  this  is  to  be  decided  by 
the  evidence  produced  before  the  Commissioner.  The  21  deposi- 
tions taken  in  the  conflict  between  Robertson,  Perry,  and  Parks, 
being  taken  without  notice  to  Cornell,  are  not  evidence  against  him, 
and,  therefore,  cannot  be  considered  by  the  judge  upon  the  appeal. 
The  only  evidence  which  he  can  consider  is  that  which  is  con- 
tained in  the  depositions  of  Wm.  Frost  and  Benjamin  Peck,  and  in 
the  cross-examination  of  Mr.  Cornell  himself  by  the  counsel  of  Mr. 
Perry. 

The  question  then  is  —  whether  the  machine  described  by  Mr. 
Cornell  to  those  two  witnesses  is  substantially  the  same  as  that  for 
which  he  asks  a  patent. 

The  improvement  consists  in  the  great  diminution  of  the  friction 
of  the  machine,  by  which  the  same  effect  is  produced  by  a  power 
much  less  than  that  which  was  necessary  to  work  the  old  machine. 

As  the  question  is  merely  of  priority  of  invention,  it  is  not  neces- 


JUDGE    CRANCh's     DECISIONS.  557 

sary  to  describe  the  particular  alterations  of  the  old  machine  which 
constitute  the  improvement. 

It  is,  however,  necessary  to  examine  the  testimony,  to  see 
whether  the  improvement  which  Mr.  Cornell  described  to  the  wit- 
nesses is  substantially  the  same  as  that  for  which  he  now  claims  a 
patent. 

It  appears  by  the  deposition  of  Mr.  William  Frost,  the  principal 
witness,  and  who  seems  to  have  testified  fairly  and  intelligently,  that 
Mr.  Cornell,  in  June  or  July,  1843,  described  to  the  witness  a  plan 
for  a  machine  for  making  lead  pipe,  different  from  any  machine  for 
that  purpose  then  in  use  ;  and  that  he  intended  to  use  a  hollow  ram, 
with  an  aperture  in  the  bottom  coming  out  at  the  side  of  the  ram  ; 
that  he  intended  to  place  a  die  on  the  top  of  the  ram,  then  to  have  a 
mandril  to  pass  through  the  top  of  the  cylinder  long  enough  to  pass 
through  the  interior  of  the  die,  leaving  a  space  between  the  mandril 
and  the  die  for  the  lead  to  pass  through,  when  the  ram  was  forced 
upward  against  the  lead,  making  the  pipe  from  that  portion  of  the 
lead  which  was  first  acted  upon  by  the  top  of  the  ram  being  pressed 
against  it ;  his  object  being,  as  he  stated  it,  to  avoid  the  immense 
friction  that  was  produced  by  driving  so  large  a  mass  of  lead  before 
the  ram,  out  through  the  aperture,  as  used  in  many  other  machines 
then  in  use.  That  he  (Mr.  Cornell)  exhibited  to  the  witness  a  sketch 
or  di-awing  of  his  plan  ;  and  the  witness  then  prepared  and  produced 
a  drawing  of  Cornell's  plan,  as  he  then  drew  and  described  it,  which 
is  annexed  to  his  deposition,  and  marked  A. 

That,  about  a  fortnight  afterward,  the  witness  had  a  further  con- 
versation with  Mr.  Cornell  in  relation  to  his  said  plan  for  a  pipe 
machine  in  Mr.  Cornell's  office,  in  New  York  ;  that  he  then  stated 
to  the  witness  and  described  the  •  manner  in  which  he  intended  to 
construct  a  pipe  machine  for  the  purpose  of  passing  the  lead  pipe 
through  the  interior  of  the  ram,  and  for  using  a  movable  mandril 
in  connection  with  the  hollow  ram,  and  for  forming  the  pipe  at  the 
point  on  which  the  ram  pressed  against  the  lead  ;  that  Mr.  Cornell 
made  a  sketch  of  such  machine,  a  copy  of  which  this  witness  has 
made,  thinking  it  might  be  called  for,  and  to  explain  the  arrange- 
ment which  he  then  described.  Mr.  Cornell  said  he  intended  to 
make  such  a  machine.  The  counsel  for  Mr.  Perry  objected  to  the 
introduction  of  the  copy  of  Mr.  Cornell's  sketch,  unless  the  loss  of 
the  original  should  first  be  proved.  After  the  proof  of  the  loss  of 
47* 


558  JUDGE  cranch's   decisions. 

the  original,  the  witness  produced  and  filed  his  copy,  which  is  an- 
nexed to  the  deposition  and  marked  B. 

It  further  appears,  by  the  testimony  of  the  witness,  William 
Frost,  that  the  sketch  or  drawing  B  differs  from  the  sketch  or 
drawing  A,  in  having  two  cross-heads  and  two  rods  to  connect 
them  together ;  also  an  upper  movable  mandril,  which  was  con- 
nected to  the  upper  cross-head  and  kept  in  its  proper  position  by 
means  of  a  stand  or  frame  which  was  secured  to  the  lead  cylinder, 
the  lower  cross  being  secured  to  the  ram  rising  from  the  hydraulic 
cylinder.  The  upper  mandril  or  ram,  he  stated,  might  be  hollow 
or  solid,  for  the  purpose  of  holding  either  the  short  mandril  or  die  ; 
that  these  drawings  do  not  exhibit  the  nuts,  bolts,  or  screws,  or 
the  manner  in  which  the  different  parts  are  guided  or  secured  to 
each  other,  but  merely  the  arrangement  of  the  raiser  dies  and  man- 
drils to  each  other,  and  as  he  designed  to  place  them  for  the  pur- 
pose of  manufacturing  lead  or  other  pipes  ;  that  the  leading  essen- 
tial feature  of  these  two  planes,  which  distinguishes  them  from 
machines  previously  known  for  the  purpose  of  making  lead  pipe,  is 
the  hollow  ram,  and  the  die  placed  on  the  top  of  it,  and  the  form- 
ing of  the  pipe  on  the  head  of  that  ram  from  the  point  where  it 
presses  against  the  lead,  and  the  passing  of  the  pipe,  when  so 
formed,  through  the  interior  of  the  ram ;  that  the  second  plan 
drawn  and  described  to  this  witness  contained  this  essential  feature 
or  difference,  with  the  addition  of  the  parts  which  are  before  de- 
scribed ;  that,  from  the  drawings  and  descriptions  so  made  by  Mr, 
Cornell  to  this  witness,  he  could  have  made  and  constructed  ma- 
chines for  making  pipe  upon  those  plans. 

That  the  drawing,  marked  exhibit  B,  shows  the  relations  of  the 
rams  to  each  other,  of  the  die,  of  the  short  mandril,  of  the  cross- 
heads,  and  the  rods  which  connect  them  together,  as  also  the  lead 
cylinder,  the  cast  iron  stand  or  frame,  the  hydraulic  cylinder,  and 
a  portion  of  the  ram  rising  therefrom  ;  as  also  the  columns  for  con- 
necting the  hydraulic  and  lead  cylinder  together.  It  also  shows 
the  upper  hollow  ram,  as  also  the  lower  hollow  ram,  with  the  aper- 
tures through  the  same.  It  does  not  describe  the  manner  in  which 
the  different  parts  are  secui*ed  to  each  other,  but  simply  the  arrange- 
ment described  by  Mr.  Cornell  in  New  York. 

This  witness  says  he  is  not  aware  that  Mr.  Cornell  ever  built  a 
machine  with  the  improvements  which  he  described  to  the  witness. 

He   further  testified  that  Mr.  Cornell,  at  different  times,  showed 


JUDGE    CRANCH's    DECISIONS.  559 

him  at  least  half  a  dozen  drawings  like  exhibit  B  on  separate  and 
distinct  pieces  of  paper,  also  two  in  Connecticut  and  two  in  Brook- 
lyn, also  two  like  exhibit  A,  one  of  them  on  board  of  the  steamboat 
"Croton,"  in  June  or  July,  1843,  and  the  other  at  his  factory,  in 
Glenville,  Connecticut. 

That,  in  the  fall  of  1844,  he  made,  at  the  request  of  Mr.  Cornell, 
an  estimate  of  the  cost  of  such  a  machine  as  that  described  in  the 
exhibit  B. 

The  witness,  Benjamin  Peck,  testified  that,  in  June,  1843,  before 
Mr.  Cornell  had  applied  for  a  patent  for  his  invention  of  an  improve- 
ment in  the  machine  for  the  manufacture  of  lead  pipe,  he  com- 
municated to  this  witness  his  plan  for  the  construction  thereof; 
that  he  stated  that  the  die  was  to  be  attached  to  the  end  of  the 
ram.  The  ram  to  be  hollow,  the  pipe  to  form  at  the  end  of  the 
ram,  and  pass  down  through  the  hollow  ram  ;  that  the  object  was 
to  prevent  friction.  The  core  was  to  pass  through  the  cylinder, 
the  end  of  it  to  be  inserted  in  the  die,  the  die  and  mandril  to  move 
together ;  that  the  mandril  forms  the  inside  of  the  pipe.  It  is 
sometimes  called  the  core.  The  pipe  is  formed  over  the  mandril 
or  core.  The  hollow  ram  and  the  movable  mandril  were  to  move 
together  by  force  of  an  hydraulic  press ;  that  Mr.  Frost  was  present 
at  this  communication. 

This  witness  states  that  the  machine  for  which  Mr.  Cornell  seeks 
a  patent,  contains,  among  other  things,  the  lead  cylinder,  the  ram, 
the  die,  the  core,  rod  or  mandril. 

That  the  construction  of  this  machine  differs  from  that  of  the  old 
machine,  which  was  worked  by  Parks ;  in  this  the  die  is  placed  at 
the  head  of  the  ram,  in  the  old  one  at  the  top  of  the  cylinder.  In 
this  the  pipe  forms  at  the  head  of  the  ram,  in  the  old  one  at  the  top 
of  the  cylinder.  That  the  advantage  of  this  over  the  old  one  is, 
that  in  the  old  one  the  whole  body  of  lead  from  the  bottom  to  the 
top  of  the  cylinder  was  required  to  move  in  a  body,  in  order  to 
form  the  pipe  at  the  top  of  the  cylinder  ;  whereas  in  this  improve- 
ment the  main  body  of  the  lead  is  not  required  to  move,  because 
the  pipe  forms  at  the  head  of  the  ram  immediately  after  the  pressure 
is  put  on,  and   passes  out  through  the  ram. 

That  about  two  months  ago,  (November,  1846,)  Mr.  Cornell 
showed  this  witness  a  pencil  sketch  of  his  improvement,  saying  that 
that  was  his  plan  for  the  machine  for  which  he  was  about  to  get  a 
patent,  and  to  have  a  model  made  of  it.     That  sketch  did  not  show 


560  JUDGE    CRANCH  S    DECISIONS. 

the  hollow  ram.  That  when  Mr.  Cornell  showed  to  this  witness 
that  sketch,  he  said  that  was  a  sketch  of  his  invention  which  he 
had  before  disclosed  to  this  witness,  and  that  there  was  a  die  at  the 
head  of  the  ram,  and  that  the  ram  was  hollow  ;  that  on  the  sketch 
he  saw  he  could  not  say  whether  the  ram  was  hollow  or  not.  He 
thinks  there  was  no  hydraulic  sketch  on  that  sketch.  There  was 
a  lead  cylinder  and  a  mandril  core  or  ram.  The  end  of  the  core  or 
mandril  extended  out  of  the  top  of  the  cylinder,  and  down  to  the 
head  of  the  ram,  or  near  to  it.  This  witness  was  sure  there  was  a 
representation  of  a  ram  ;  one  end  of  the  ram  was  placed  near  the 
cylinder,  the  other  below.  He  thinks  that  no  part  of  the  ram,  as 
represented  in  the  sketch,  entered  the  lead  cylinder.  That  the  ram 
of  the  lead  cylinder,  as  represented  in  the  sketch,  was  a  round  piece 
of  iron.  This  witness  only  saw  the  sketch  for  a  few  minutes,  and 
handed  it  back  to  Mr.  Cornell.  Being  asked,  in  cross-examination, 
to  describe  the  frame  work  of  the  machine  as  it  appeared  on  the  said 
sketch,  he  says  there  was  a  mark  across  the  top  which  he  supposed 
represented  a  piece,  and  one  straight  line  down  each  side.  The  core 
was  in  the  centre  of  the  cylinder  ;  one  end  projected  at  the  top,  and 
came  down  near  the  bottom  of  the  cylinder.  There  was  a  piece 
across  the  top.  He  does  not  recollect  seeing  the  die.  He  does  not 
know  by  whom  the  sketch  was  made.  This,  he  says,  was  a  rough, 
and  to  all  appearances  an  imperfect  sketch.  Mr.  Cornell,  the 
appellee,  having  been  affirmed  and  examined  as  to  the  loss  of  the 
two  original  drawings  or  sketches,  of  which  the  witness,  Mr.  Frost, 
testified  that  the  exhibits  A  and  B  are  copies  made  by  him,  was 
cross-examined  by  the  counsel  of  Mr.  Perry,  at  large,  as  if  he,  Mr. 
Cornell,  were  a  competent  witness  in  chief — thereby  making  the 
answer  of  Mr.  Cornell  evidence  for  himself. 

Upon  that  cross-examination  he  stated  that  he  has  a  distinct  recol- 
lection of  making  a  sketch,  and  has  no  doubt  it  was  at  the  time 
referred  to  by  Mr.  Frost.  Thinks  it  was  made  on  foolscap  paper, 
with  a  lead  pencil,  but  it  might  have  been  with  ink.  It  was  made  in 
the  office  at  his  works,  (in  Connecticut ;)  presumes  it  was  at  the 
time  Mr,  Frost  speaks  of.  They  have  had  many  conversations  on 
the  subject.  He  showed  the  drawings  to  Mr.  Peck,  and  he  thinks  to 
Mr.  Parks,  who  was  at  work  for  him.  He  affirms  positively  that  he 
showed  them  to  Mr.  Peck  and  Mr.  Frost.  He  does  not  wish  to  iden- 
tify any  particular  drawings.  He  made  a  number  at  different  times, 
and  had  frequent  conversations  with  Mr.  Peck  and  Mr.  Frost  on  the 


JUDGE    CRANCh's    DECISIONS.  561 

subject,  He  is  not  certain  whether  he  mentioned  it  first  to  Mr.  Frost 
or  Mr.  Peck.  The  first  to  Mr.  Peck  was,  no  doubt,  in  his  works  in 
Connecticut,  in  June,  1843.  He  cannot  recollect  which  the  first  time 
he  mentioned  it  to  Mr.  Frost,  but  it  was  in  either  June  or  July,  1843. 
He  thinks  it  was  early  in  June.  He  has  none  of  his  drawings  at  pres- 
ent. The  first  drawing  was  showing  the  appearance  of  a  lead  cyl- 
inder ;  the  ram  at  the  mouth  of  the  cylinder,  which  ram  should  be 
hollow  ;  a  die  to  be  placed  in  the  head  of  the  ram,  and  the  pipe 
should  form  at  the  head  of  the  ram  as  the  ram  rose,  by  any  power 
that  might  be  applied  to  it,  and  pass  out  through  the  bottom  of  the 
ram.  The  mandril  or  core,  to  form  the  calibre  of  the  pipe,  should 
come  from  the  head  of  the  cylinder. 

FVom  comparing  this  evidence  with  Mr.  Cornell's  specification,  it 
will  be  seen  that  the  invention  therein  described  is  substantially,  if 
not  exactly,  that  for  which  he  now  claims  a  patent.  That  it  is  a 
great  improvement  is  admitted,  and  the  only  question  is,  who  is  enti- 
tled to  the  priority  of  invention  .''  There  being  no  evidence  that  any 
other  person  invented  it,  Mr.  Cornell  must  be  adjudged  to  be  the  first 
inventor. 

But  it  is  said  that  Mr.  Cornell  is  not  entitled  to  a  patent,  because  he 
has  never  reduced  the  invention  to  practice.  But  reducing  to  prac- 
tice, differs  from  bringing  into  use.  There  is  no  law  requiring  the 
applicant  to  reduce  his  invention  to  actual  use  before  he  can  obtain  a 
patent.  On  the  contrary,  the  use  of  the  invention  before  obtaining 
the  patent  is  one  of  the  reasons  for  refusing  it.  An  inventor  has 
reduced  his  invention  to  practice  when  he  has  so  described  it  upon 
paper,  with  such  drawings  or  model  as  to  enable  any  person,  skilled 
in  the  art,  to  make  and  use  the  same.  He  must  show  that  it  is  prac- 
ticable, and  the  manner  in  which  it  may  be  used.  But  it  is  not 
necessary  that  he  should  do  this  until  he  has  perfected  his  invention 
and  is  ready  to  apply  for  a  patent.  He  may  have  conceived  the  idea 
years  ago,  but  is  not  obliged  to  furnish  drawings  or  model  until  he 
makes  his  application.  In  the  present  case,  the  specification  and 
drawings  and  model  have  been  filed,  showing  the  invention  to  be 
practicable,  and  the  manner  in  which  it  can  be  used. 

It  is  suggested  that  Mr.  Cornell  has^not  used  "  reasonable  diligence 
in  adjusting  and  perfecting "  his  invention  ;  having  done  nothing 
from  the  spring  of  1843  to  the  winter  of  1846,  and  therefore,  under 
the  equity  of  the  fifteenth  section  of  tlie  patent  law  of  1836,  has  lost 
the  benefit  of  his  priority  of  invention.     That  clause  of  the  section  is 


562  JUDGE  cranch's  decisions. 

only  applicable  to  the  case  of  a  patent  surreptitiously  or  unjustly 
obtained  while  the  first  inventor  was  using  reasonable  diligence  in 
adapting  and  perfecting  his  invention ;  not  to  the  case  of  conflicting 
applicants  before  any  patent  is  granted.  It  is  one  of  the  pleas  which 
the  defendant,  who  is  sued  for  a  supposed  violation  of  the  surrepti- 
tious patent,  may  plead  ;  and  if  pleaded,  it  may  be  necessary  for  the 
defendant  to  show,  in  order  to  vacate  the  patent,  that  he  was  using 
reasonable  diligence,  &c.,  when  the  patent  was  obtained.  But  before 
a  patent  is  granted  to  any  one  for  the  invention,  there  is  no  law  that 
requires  the  first  inventor  to  disclose  his  invention  within  any  limited 
time  before  application  for  a  patent ;  and  there  is  no  limitation  unless 
the  lapse  of  time  be  sufficient  to  show  an  abandonment  of  the  inven- 
tion, which  is  a  question  for  the  jury  and  not  for  the  Commissioner. 
Nor  does  the  priority  of  application  for  a  patent  decide  the  priority  of 
invention. 

It  should  be  borne  in  mind,  that  the  cases  cited  from  the  books  are 
all  cases  at  law  or  in  equity,  in  actions  for  violations  of  patents 
already  granted.  The  proceedings  before  the  Commissioner  of 
Patents  are  initiatory.  The  question  is,  "  whether  the  patent  shall 
be  granted,"  not  "  whether  it  shall  be  vacated  ; "  and  a  patent  may 
be  granted  or  refused  upon  less  evidence  than  would  be  required  to 
sustain  or  amend  it. 

Upon  all  the  points  made  in  this  case,  I  refer  to  the  opinion  in  the 
case  of  the  appeal  of  Hildreth  v.  Heath,  filed  in  the  Patent  Office,  on 
the  15th  of  Octobe'r,  1841. 

Upon  consideration  of  the  whole  case,  I  am  of  opinion  that  Sam- 
uel G.  Cornell  is  the  first  inventor  of  the  improvement  in  the 
machine  for  making  lead-pipe,  as  claimed  in  his  specification,  and 
that  the  decision  of  the  Commissioner  of  Patents,  awarding  the  prior- 
ity of  invention  to  the  said  Samuel  G.  Cornell,  be,  and  the  same  is 
hereby,  affirmed  ;  and  that  he  is  "  entitled  to  receive  a  patent  as 
prayed  for."  W.  CRANCH. 

July  7,  1847. 


JUDGE    CRANCh's    DECISIONS.  563 


District  of  Columbia,  to  wit : 

William  Atkinson,  appellant, 

vs. 
William    Boardman,   Jr.,   appellee.    J 

Your  appeal  from  the  decision  of  the  Commissioner  of  Patents, 
"that  William  Boardman,  Jr.,  is  the  first  inventor  of  the  improve- 
ments to  the  portable  steam-pump,  which  are  the  subject-matters  in 
controversy  "  between  the  said  parties,  which  decision  bears  date  on 
the  17th  of  May,  1847  : 

I,  William  Cranch,  Chief  Justice  of  the  District  Court  of  the  Uni- 
ted States  for  the  District  of  Columbia,  certify  to  the  honorable  the 
Commissioner  of  Patents,  that,  on  the  second  Monday  in  October, 
1847,  according  to  notice  duly  given,  the  parties  aforesaid  appeared 
before  me,  namely  :  the  said  WiUiam  Atkinson  by  his  counsel, 
Charles  M.  Keller,  and  the  said  William  Boardman,  Jr.,  by  his  coun- 
sel, Z.  C.  Robbins  —  when  the  said  counsel  agreed  to  submit  their 
respective  arguments  in  writing,  which  was  done  on  Thursday,  the 
14th  of  the  said  month,  to  which  day  the  hearing  of  the  said  appeal 
was  by  consent  adjourned  ;  and  the  said  appeal  being  then  fully 
heard  and  considered  by  me  upon  all  points  involved  by  reas'on  of 
appeal,  and  the  grounds  of  your  decision  filed  in  the  office,  I  do 
hereby  affirm  the  same,  and  adjudge  that  the  said  William  Board- 
man,  Jr.,  is  the  inventor  of  the  improvements  to  the  portable  steam- 
pump,  which  are  the  subject-matters  in  this  controversy. 

W.  CRANCH. 

October  21,  1847. 

This  decision  is  sustained  by  the  following  opinions : 
Williabi  Atkinson,  appellant,  ~j 

vs.  y 

William   Boardman,   Jr.,   appellee.    3 

This  is  an  appeal  from  the  decision  of  the  Commissioner  of  Patents, 
in  a  case  of  conflicting  applications  for  certain  improvements  in  the 
construction  of  steam-pumps. 

It  appears  by  the  files  in  the  Patent  Office,  that,  on  the  4th  of 
December,  1843,  William  Boardman,  Jr.,  filed  his  application  for  his 
invention  "  of  a  new  and  improved  portable  steam-pumping  engine, 


564  JUDGE  cranch's  decisions. 

for  relievixig  stranded  vessels  and  for  other  purposes,"  which  applica- 
tion was  rejected  by  the  then  Commissioner  of  Patents,  on  the  20th  of 
February,  1844.  It  does  not  appear  upon  what  grounds  that  applica- 
tion was  rejected  ;  but  it  is  suggested  that  the  matter  as  then  pre- 
sented was  not  patentable,  but  that  certain  improvements  have  been 
since  invented  and  made  by  which  the  matter  has  become  patentable, 
and  the  Commissioner  has  decided  that  the  applicant,  William  Board- 
man,  Jr.,  is  entitled  to  a  patent.  It  is  unnecessary  to  ascertain  what 
these  improvements  were,  as  this  is  a  case  of  conflicting  applications 
for  a  patent  for  the  same  thing.  The  question  is  not,  now,  who 
invented  the  matter  upon  which  the  first  application  of  Mr.  Board- 
man  was  founded,  but  who  is  the  inventor  of  the  improvements 
which  have  made  the  matter  patentable.  That  such  improvements 
have  been  made  is  admitted  by  both  parties,  and  by  the  Commis- 
sioner. 

I  do  not  find  any  evidence  that  Mr.  Atkinson,  after  the  rejection  of 
Mr.  Boardman's  first  application,  on  the  20th  of  February,  1844, 
invented  any  patentable  improvement  upon  the  pump.  It  appears  by 
all  the  evidence  that  Mr.  Boardman  constructed  the  pump  and  all  the 
improvements.  In  the  absence  of  all  evidence  to  the  contrary,  the 
presumption,  therefore,  is  that  he  was  also  the  inventor,  and  the  bur- 
den of  proof  is  thrown  upon  Mr.  Atkinson  to  show,  not  merely  that  he 
first  suggested  to  Mr.  Boardman  the  abstract  idea  of  a  steam-pump, 
(for  steam-pumps  had  been  in  common  use  for  many  years,)  but 
that  he  invented  the  improvements  which  entitle  it  to  a  patent.  To 
rebut  this  inference  Mr.  Atkinson  produces  the  deposition  of  Josiah 
L.  Hale,  who  says  :  "  Not  long  after  the  loss  of  the  ship  Sheffield, 
in  November  or  December,  1843,  I  met  Mr.  Atkinson  and  Mr. 
Boardman  in  the  Merchants'  Exchange,  and  knowing  that  some 
alienation  of  feeling  existed  between  them,  and  being  anxious  that 
they  should  be  friends,  I  said  to  Mr.  Boardman,  '  why  don't  you  and 
Mr.  Atkinson  settle  your  difficulties  r  '  or  words  equivalent.  He, 
Boardman,  made  a  reply,  having  reference  to  a  little  paragraph, 
which  had,  about  that  time,  appeared  in  one  of  the  papers,  respecting 
the  pump  in  question,"  (meaning,  no  doubt,  the  paragraph  which 
appeared  in  the  Journal  of  Commerce  of  the  25th  of  November, 
1843,  which  gave  to  Mr.  Atkinson  the  whole  credit  of  the  invention 
of  the  pump.)  "  He,  Boardman,  spoke  with  some  warmth,  but 
respectfully.  The  deponent  replied,  '  I  had  always  supposed  Mr. 
Atkinson  was  the  inventor.''     He,  Boardman  said,  '  he  was —  I  again 


JUDGE    CRANCH's    DECISIONS.  565 

say,  he  was''  —  he,  Boardman,  used  these  words,  or  words  equally 
strong.  I,  deponent,  replied,  '  so  I  always  supposed.'  After  these 
strong  expressions,  Mr.  Boardman  said  '  that  it  was  the  combination 
which  made  the  steam-pump.'  Always  supposing  that  Mr.  Atkinson 
was  the  inventor,  I  feel  certain  I  could  never  have  conveyed  any 
other  idea  to  any  person  that  he  was  not  the  inventor." 

Taking  the  whole  testimony  of  Mr.  Josiah  L.  Hale,  altogether,  it 
seems  strange  that  Mr.  Boardman,  while  expressing  indignation  at 
the  paragraph  which  gave  to  Mr.  Atkinson  the  whole  credit  for  the 
invention  of  the  pump,  should  have  admitted  that  he  was  the  inventor, 
in  the  technical  sense  of  the  word.  He  might  have  admitted 
"  that  Mr.  Atkinson  suggested  the  idea  of  having  a  steam-pump," 
as  testified  by  Mr.  Flanders ;  and  yet  he  (Boardman)  might 
be  the  inventor  of  the  peculiar  combination  of  mechanical  princi- 
ples which  entitled  it  to  a  patent.  Mr.  Hale  says  that  Boardman 
told  him,  "  that  it  was  the  combination  which  made  the  steam-pump." 
There  is  no  evidence  that  that  combination  was  suggested  to  him  by 
Mr.  Atkinson. 

I  do  not  perceive  in  the  testimony,  any  further  evidence  in  support 
of  Mr.  Atkinson's  claim  to  be  the  inventor  of  any  of  the  patentable 
improvements  in  the  portable  steam-pump. 

I  have  not  considered  the  declarations  of  the  parties  in  their  own 
favor,  in  the  absence  of  each  other,  as  competent  evidence  in  this 
cause  for  any  purpose  but  to  ascertain  when  and  what  they  have 
respectively  claimed  to  have  invented. 

There  is  no  evidence  that  Mr.  Boardman  was  in  the  employment 
and  pay  of  Mr.  Atkinson  at  the  time  of  the  supposed  invention,  or 
at  the  time  of  the  construction  of  the  improvements  which  render 
it  a  patentable  invention,  or  at  any  previous  time.  On  the  con- 
trary, it  appears  in  the  testimony  of  Mr.  Currier,  that  before  his 
first  application  for  a  patent,  in  December,  1843,  Mr.  Boardman 
built  four  of  these  pumps  for  the  board  of  underwriters,  who  paid 
him  for  the  construction  thereof;  and  that  this  was  done  without 
the  interference  or  agency,  but  with  the  knowledge  of  Mr.  Board- 
man. 

There  does  not  appear  to  be  any  evidence  that  Mr.  Atkinson, 
either  before  or  after  the  rejection  of  Mr.  Boardman's  application 
for  a  patent  for  the  pump,  gave  Mr.  Boardman.  any  instructions  in 
relation  to  the  particular  combination  of  mechanical  principles, 
which  is  understood  to  be  the  ground  of  his  present  application  for 
48 


566  JUDGE     CllANCH  S     DECISIONS. 

a  patent ;  noi'  any  model  or  drawings  by  which  to  construct  the 
pump,  nor  does  there  appear  to  be  any  evidence  that  he  paid  Board- 
man  or  any  other  person  for  constructing  it ;  or  that  the  under- 
writers had  any  authority  from  Mr.  Atkinson  to  use  these  pumps, 
which  had  been  built  for  them  by  Mr.  Boardman. 

The  deposition  of  Mr.  Josiah  L.  Hale,  was  taken  in  New  York 
ten  days  after  Mr.  Boardman's,  senior,  deposition  had  been  taken,  in 
Nashville,  New  Hampshire,  and  may  have  been  taken  with  a  view 
to  rebut  it.  Mr.  Boardman,  senior,  testified  that  between  the 
spring  of  1841,  and  the  fall  of  1842,  Mr.  Atkinson  told  him  that 
William  (his  son)  had  invented  a  steam-pump  at  his,  Atkinson's 
request,  and  that  he  had  requested  William  to  turn  his  attention  to 
getting  up  a  steam-pump,  a  portable  pump,  to  be -used  about 
wrecked  vessels.  That  Atkinson  asked  him  if  he  had  seen  the 
model  of  the  pump  invented  by  William.  He,  this  witness,  re- 
plied, that  it  was  shown  to  him  by  Currier.  That  in  none  of  the 
conversations  which  he  had  with  Mr.  Atkinson  did  he  ever  pretend 
or  intimate  that  he  was  the  inventor  of  the  pump,  or  of  any  part 
of  it,  but,  on  the  contrary,  had  always  stated,  that  William,  his  son, 
was  the  inventor.  That  in  September,  1842,  Mr.  Hale,  speaking  of 
William  Boardman,  junior,  said,  he  had  recently  invented  a  steam- 
pump,  which  they  thought  highly  of,  and  he  should  use  his  influ- 
ence to  have  the  insurance  companies  adopt  it,  and  to  have  one 
built,  and   that  he  intended  William  should  make  money  out  of  it. 

Mrs.  Boardman,  mother  of  the  appellee,  says,  that  in  the  sum- 
mer of  1842,  Mr.  Atkinson,  speaking  of  her  son,  William,  told  her 
that  he  had  been  inventing  anew  pump  —  a  steam-pump,  to  raise 
ships  from  the  ocean,  that  he  thought  William  would  do  some- 
thing great  with  it,  that  he  would  assist  him.  That  in  the  next 
season,  Mr.  Atkinson  was  again  at  their  house  in  Nashville.  He 
said  William  was  getting  along  finely  with  his  pump,  and  expressed 
his  opinion  that  it  would  be  very  valuable  to  him.  That  in  nehher 
of  these  conversations  did  Mr.  Atkinson  intimate  that  he  had  in- 
vented any  part  of  the  said  pump.  That  he  expressed  himself  as 
grateful  for  favors  he  had  received  from  her  husband,  and  was 
glad  to  have  some  opportunity  to  make  a  return  by  assisting  her 
son. 

Mr.  Jeremiah  J.  Dickinson  says  that  some  time  between  June  and 
September,  1842,  he  was  present  at  the  exhibition  of  a  steam-pump 
in  Pearl  street,  at  the  request  of  Mr.  Atkinson.     That  two  or  three 


JUDGE     CRANCH's    DECISIONS.  567 

of  the  board  of  underwriters  were  there,  and  he  tliinks  Mr.  Board- 
man  was  there  also  ;  he  understood  from  Mr.  Atkinson  that  Mr. 
Boardman  was  the  Inventor  of  the  pump  ;  that  Mr,  Atkinson  was  to 
find  the  funds,  and  that  they  were  to  be  partners  in  the  concern  ; 
and  that  he  always  thought  they  were  partners  until  one  or  two 
years  ago,  when  he  learned  there  liad  been  some  misunderstanding 
between  them. 

Horace  Prior  testifies  that  he  received  from  Mr.  Boardman 
compensation  for  the  use  of  the  room  in  which  the  pump  was 
exhibited. 

Mr.  Orlando  Bennett  proves  the  publication  of  the  offensive  para- 
graph, which  seems  to  have  caused  the  misunderstanding  between 
Boardman  and  Atkinson,  by  attributing  the  whole  invention  to  Mr. 
Atkinson.  This  paragraph,  a  copy  of  which  is  annexed  to  Mr.  Ben- 
net's  deposition,  appeared  in  the  Journal  of  Commerce  of  the  25th 
of  November,  1843.  This  seems  to  have  excited  Mr.  Boardman, 
and  on  the  4th  of  December  following  he  filed  his  petition  for  a 
patent. 

William  Fletcher  testifies  that  William  Boardman,  Jan.,  employed 
him  to  make  the  patterns  for  the  pump,  and  paid  him  for  making 
them.  Mr.  Boardman  showed  him  a  sketch  which  gave  him  the 
idea  so  that  he  could  commence.  He  never  had  any  communica- 
tion with  Mr.  Atkinson,  and  did  not  know  him  till  the  day  of  tak- 
ing his  deposition.  This  witness  made  a  casting  of  the  pump  pat- 
tern. Mr.  Boardman  made  an  alteration  in  the  angle  of  the  dis- 
charge nozzle.  About  the  1st  of  June,  1842,  he  took  to  Mr.  Board- 
man  a  boiler  for  the  purpose  of  trying  the  model,  which  was  then 
complete.  The  boiler  was  of  iron.  The  pumps  were  cast  in  Brown- 
ing's foundery. 

Cyrus  Currier,  of  the  firm  of  Davis,  Currier  &  Co.,  machinists  at 
Newark,  New  Jersey,  testifies  that  they  made  four  of  these  steam- 
pumps  for  Mr.  Boardman,  and  were  paid  for  them  by  the  New  York 
underwriters  ;  Mr.  Boardman  having  attested  to  the  accuracy  of  the 
accounts.  That  he  directed  the  building  of  them,  and  drafted  them. 
The  order  for  the  first  pump  was  given  about  the  middle  of  March, 
and  completed  the  middle  of  May,  1843. 

Mr.  Atkinson  was  never  in  the  shop  during  the  building  of  these 
pumps,  to  the  knowledge  of  this  witness,  and  gave  no  instructions 
about  the  building  of  them.  He,  Mr.  Atkinson,  has  been  in  the 
shop  since  they  removed.     He  came  and  said  he  wanted  an  engme 


568  JUDGE     CRANCH  S     DECISIONS. 

built  with  a  pump  attached  to  it.  He  gave  no  drawings,  but  asked 
this  witness's  opinion  as  to  the  size,  &c. ;  thinks  he  asked  if  Mr. 
Board  man's  patterns  were  there  ;  he  was  answered  "  no,"  they  were 
in  New  York.  He  then  asked  the  witness  if  he  could  build  him  a 
pump,  the  same  as  they  had  built  for  Boardman  ;  thinks  it  was  in 
the  fall  of  1841,  that  Boardman  first  told  him  he  contemplated 
building  a  pump  for  wrecking  purposes.  Thinks  it  was  in  the  middle 
of  the  fall.  He  first  saw  the  model  of  the  steam-pump  completed 
in  the  spring  or  summer  of  1842.  He  saw  Mr.  Atkinson  at  the 
place  where  he  saw  the  model.  Mr.  Atkinson  did  not,  at  that  time, 
claim  to  be  the  inventor  of  the  pump,  or  say  any  thing  to  lead  this 
witness  to  think  that  he  was  the  inventor,  nor  did  he  say  or  do 
any  thing  which  gave  this  witness  to  understand  that  he  did  not 
recognize  Mr.  Boardman,  at  that  time,  as  the  inventor.  Mr.  Atkin- 
son said  nothing  about  it.  Mr.  Boardman  showed  him  the  whole  and 
explained  it  to  him. 

Mr.  Julius  Von  Schmidt,  a  machinist  in  Washington,  D.  C,  tes- 
tified that  he  was  applied  to,  to  make  a  model  for  Mr.  Atkinson 
"  a  year  ago  last  winter."  (His  deposition  was  taken  in  1847.)  Mr. 
Atkinson  showed  him  a  model  and  drawing  in  Doctor  Jones's,  and 
wished  him  to  make  him  such  a  model,  which  he  did  with  some 
small  variation ;  saw  the  same  model  in  the  Patent  Office  about 
three  months  ago.  The  name  of  William  Boardman,  junior,  was 
upon  it.  He  made  a  sketch  of  it  at  Dr.  Jones's  office.  He  has 
seen  at  the  Patent  Office,  the  model  he  made  for  Mr.  Atkinson. 
Mr.  Atkinson  did  not  give  him  any  idea  of  the  principle  or  con- 
struction of  the  pump  before  he  took  him  to  Dr.  Jones's  office.  He 
called  the  model  at  Dr.  Jones's  office  his  model.  He  did  not  ex- 
amine the  drawing  particularly  ;  he  only  took  a  glance  at  it.  Dr. 
Jones  held  it  in  his  hands,  and  took  it  away  immediately  and  told 
him  he  could  sketch  better  from  the  model.  Upon  a  careful  con- 
sideration and  comparison  of  the  evidence  on  both  sides,  I  am  of 
opinion  that  the  preponderance  is  greatly  in  favor  of  William  Board- 
man,  jun.,  as  the  inventor  of  the  improvements  in  the  steam-pump, 
for  which  he  has  now  applied  for  a  patent,  and  I  do  therefore 
affirm  the  decision  of  the  honorable  the  Commissioner  of  Patents  in 
this  cause. 

W.  CRANCH. 
'Ocloier  21,  1847. 


JUDGE     CRANCH's    DECISIONS.  569 

District  of  Columbia,  to  wit : 

Edwin  Janney,  appellant  from  the  refusal  of  the  Commissioner  of 
Patents  to  rehear  his  application  for  a  patent  after  it  had  been  twice 
rejected  by  the  late  Commissioner,  Mr.  Ellsworth. 

I,  William  Cranch,  Chief  Justice  of  the  District  Court  of  the 
United  States  for  the  District  of  Columbia,  certify  to  the  Hon. 
Edmund  Burke,  Commissioner  of  Patents,  that  on  the  13th  of  De- 
cember, 1847,  according  to  notice  given,  the  said  Edwin  Janney 
appeared  before  me,  and  was  fully  heard  by  his  counsel,  Mr.  J.  J. 
Greenough,  in  support  of  his  appeal ;  Mr.  Fitzgerald,  an  examining 
clerk  in  the  Patent  Office  being  also  present  and  heard  in  explana- 
tion of  the  grounds  of  the  Commissioner's  decision. 

Whereupon,  inasmuch  as  the  decision  of  the  Commissioner,  from 
which  the  appeal  is  taken,  neither  affirms  or  denies  the  right  of  the 
applicant  to  the  patent  (which  he  claims)  upon  the  merits  of  his 
supposed  invention,  it  is  not  such  a  decision  as  is  the  subject  of 
appeal  under  the  act  of  July  4,  1836,  "  to  promote  the  progress  of 
useful  arts,"  &c.,  or  the  act  of  March  3,  1839,  in  addition  to  that 
act,  and  that  therefore  I  have  not  jurisdiction  of  this  appeal,  which 
is  therefore  hereby  dismissed. 

W.  CRANCH. 

December  14,  1847. 

(The  above  decision  is  sustained  by  the  following  reasons  :) 

December  13,  1847.  —  Edwin  Janney,  Appeal. 

This  is  an  appeal  from  the  decision  of  the  Commissioner  of  Pa- 
tents in  the  following  words,  contained  in  a  letter  from  him  to  Mr. 
Janney,  dated 

Patent  Office,  Oct.  28th,  1847. 
"  Sir,  —  It  appears  by  the  records  of  this  office  that  your  applica- 
tion for  letters-patent  for  alleged  improvement  in  machinery  for  saw- 
ing staves  was  examined  and  rejected,  for  reasons  assigned  on 
the  3d  of  August,  1843.  That  on  the  7th  of  Semptember  following, 
the  case  was  reconsidered,  and  the  decision  was  again  revised  and 
affirmed.  All  these  actions  took  place  under  the  administration  of 
the  late  Commissioner  Ellsworth. 


48' 


570  JUDGE   cranch's  decisions. 

"  Under  these  circumstances,  the  decision  heretofore  made  cannot 
be  disturbed,  and  your  application  must  stand  rejected. 

"  Respectfully  yours, 

"  EDMUND  BURKE. 
"  Edward  Janney,  Esq. 

"  Care  of  J.  J.  Greenough,  Washington^  D.  C. 

The  last  application  for  the  patent  was  made  on  the  27th  of  Oc- 
tober, 1847,  some  small  amendment  having  been  made  in  the 
specification,  not  affecting  the  merits  of  the  claim,  so  that  it  was, 
in  effect,  an  application  to  the  present  Commissioner  to  revise  and 
revoke  the  two  decisions  made  by  Mr.  Ellsworth,  the  former  Com- 
missioner. His  refusal  so  to  revise  and  revoke  these  decisions  is 
not  a  ground  of  appeal  under  the  acts  of  1836  and  1839.  The  act 
of  1839  gives  the  right  of  appeal  to  the  Judge  only  in  cases  where 
an  appeal  was,  by  the  previous  act,  allowed  from  the  decision  of 
the  Commissioner  to  a  board  of  examiners,  and  then  only  when  a 
patent  was  refused.  In  the  present  case  he  has  not  refused  a  pa- 
tent. He  decides  only  that  he  will  not  examine  the  merits  of  the 
claim,  which  has  been  twice  rejected,  after  a  full  examination  of 
his  predecessor  in  office.  This  refusal  was  not  a  ground  for  appeal 
to  examiners  under  the  7th  section  of  the  act  of  1836,  and  there- 
fore is  not  a  ground  of  appeal  to  the  judge. 

Having  no  jurisdiction  of  such  an  appeal,  it  is  not  for  me  to  say 
whether  the  refusal,  under  the  circumstances  of  the  case,  was  right 
or  wrong.  There  is  no  limitation  of  time  as  to  the  appeal ;  and  I 
do  not  perceive  any  reason  why  Mr.  Janney  may  not  now  appeal 
from  the  decision  of  Mr.  Ellsworth,  and  have  the  merits  of  his 
invention  decided.  I  understand  the  merits  of  both  applications  are 
alike.  Having  no  jurisdiction  of  this  appeal,  I  suppose  it  must  be 
considered  as  dismissed. 

W.  CRANCH. 

December  13,  1847. 


JUDGE    CRANCH's     DECISIONS.  571 


~\  Upon  appeal   by   Alexander   Bain, 
from   the   decision   of   the    Hon. 
Commissioner  of  Patents,  reject- 
vs.  y      ing  his  application   for  a   patent 

for  certain  improvements  in  com- 
municating intelligence  by  elec- 
tro-chemical telegraphs. 


Alexander  Bain,  appellant, 


Sam'l.  F.  B.  Morse,  appellee 


I,  William  Cranch,  Chief  Justice  of  the  District  Court  of  the  Uni- 
ted States  for  the  District  of  Columbia,  certify  to  the  Honorable  the 
Commissioner  of  Patents,  that  on  the  first  Monday  of  February,  1849, 
according  to  notice  duly  given,  the  parties  aforesaid  appeared  before 
me  ;  to  wit.,  the  said  Alexander  Bain  by  the  Hon.  R.  M.  Gillet,  his 
counsel  ;  and  the  said  Samuel  F.  B.  Morse,  by  Amos  Kendall  and 
Alexander  H.  Lawrence,  Esquires,  his  counsel,  and  the  said  appeal 
was  heard  upon  the  decision  of  the  said  Commissioner  of  Patents, 
and  the  reasons  of  appeal  filed  in  the  office,  with  the  grounds  of  the 
said  decision,  fully  set  forth  in  writing,  touching  all  the  points  involved 
by  the  reasons  of  appeal ;  and  the  same,  being  fully  argued,  heard 
and  considered,  I  do  decide  and  adjudge,  that  the  decision  of  the  said 
Commissioner  of  Patents,  "  that  the  said  Samuel  F.  B.  Morse  is  the 
first  and  original  inventor  of  the  alleged  improvement  in  Telegraphs, 
and  as  such,  is  entitled  to  receive  a  patent  therefor,"  be,  and  the  same 
is  hereby  reversed  and  annulled  —  inasmuch  as  the  question  of 
priority  of  invention  does  not  necessarily  arise  in  the  case  ;  as  the 
claims  of  the  two  parties  do  not,  in  my  opinion,  interfere  in  regard  to 
any  matter  (described  in  their  respective  specifications)  which  is  now 
patentable.  And  I  do  further  decide  and  adjudge  that  the  said  Samuel 
F.  B.  Morse  is  entitled,  under  the  seventh  section  of  the  Act  of  1836, 
to  a  patent  for  the  combination  which  he  has  invented,  —  claimed 
and  described  in  his  specification,  drawings,  and  model ;  and  that  the 
said  Alexander  Bain  is  entitled,  under  the  same  section,  to  a  patent 
for  the  combination  which  he  has  invented,  claimed,  and  described  in 
his  specifications,  drawings,  and  model  ;  provided  the  said  Morse  and 
Bain  shall  have,  respectively,  complied  with  all  the  requisites  of  the 
law  to  entitle  them  to  their  respective  patents. 

I  deem  it  unnecessary  therefore,  to  decide  any  other  points  involved 
by  the  reasons  of  appeal. 


572  JUDGE    cranch's   decisions. 

I  herewith  return  all  the  papers,  and  add  the  reasons  of  my  deci- 
sion, which  may  be  filed  in  the  case. 

W.  CRANCH. 

Washington,  D.  C,  March  12,  1849. 

The  Commissioner,  upon  hearing,  decided  that  Mr.  Bain's  claim 
interfered  with  Mr.  Morse's ;  and  that  Mr.  Morse  was  the  first  in- 
ventor, and  rejected  the  claim  of  Mr.  Bain.  From  this  decision  Mr 
Bain  has  appealed. 

It  is  contended  by  the  counsel  of  Mr.  Morse,  that  the  judge  upon 
appeal  has  no  jurisdiction  of  the  question  of  interference.  That  an 
appeal  is  given  only  upon  the  question  of  priority  of  invention ;  and 
that  upon  the  question  of  interference,  the  decision  of  the  Commis- 
sioner is  conclusive. 

Whether  it  be  thus  conclusive,  then,  is  the  first  question  to  be 
decided. 

By  the  act  of  1836,  ch.  357,  §  T,  it  is  enacted,  that  "  if  the  speci- 
fication and  claim  shall  not  have  been  so  modified  as  in  the  opinion  of 
the  Commissioner,  shall  entitle  the  applicant  to  a  patent,  he  may,  on 
an  appeal,  and  upon  request  in  writing,  have  the  decision  of  a  board 
of  examiners,  to  be  composed  of  three,  &c. ;  and  on  examination 
and  consideration  of  the  matter  by  such  board,  it  shall  be  in  their 
power,  or  of  a  majority  of  them,  to  reverse  the  decision  of  the  Commis- 
sioner, either  in  whole  or  in  part ;  and  their  opinion  being  certified  to 
the  Commissioner,  he  shall  be  governed  thereby  in  the  further  pro- 
ceedings to  be  had  on  such  application." 

This  section  is  applicable  to  cases  where  there  is  no  conflicting 
applicant,  and  shows  that  the  legislature,  by  saying,  "  if  in  the  opin- 
ion of  the  Commissioner,''''  &c.,  did  not  intend  to  make  that  opinion 
conclusive.  On  the  contrary,  it  provides  "  that  the  board  shall  be 
furnished  with  a  certificate  in  writing,  of  the  opinion  and  decision  of 
the  Commissioner,  stating  the  particular  grounds  of  his  objection,  and 
~  the  part  or  parts  of  the  invention  which  he  considers  as  not  entitled 
to  be  patented  ;  and  that  the  said  board  shall  give  reasonable  notice 
to  the  applicant,  as  well  as  to  the  Commissioner,  of  the  time  and 
place  of  their  meeting,"  &c.  All  these  provisions  were  evidently 
intended  to  enable  the  board  of  examiners  to  revise  the  opinion  and 
decision  of  the  Commissioner,  and  show  that  his  opinion  was  not  to 
be  conclusive. 

By  the  8th  section  of  the  same  act,  (1836,)  it  is  enacted,  "  That 


JUDGE    CRANCh's    DECISIONS.  573 

whenever  an  application  shall  be  made  for  a  patent  which,  in  the 
opinion  of  the  Co7nmissioner,  would  interfere  with  any  other  patent 
for  which  an  application  may  be  pending,  or  with  any  unexpired 
patent  which  shall  have  been  granted,  it  shall  be  the  duty  of  the 
Commissioner  to  give  notice  thereof  to  such  applicants,  or  patentees, 
as  the  case  may  be  ;  and  if  either  shall  be  dissatisfied  with  the  decis- 
ion of  the  Commissioner  on  the  question  o{  priority  of  right  or  inven- 
tion on  a  hearing  thereof,  he  may  appeal  from  such  decision,  on  the 
like  terms  and  conditions  as  are  provided  in  the  preceding  section  of 
this  act ;  and  the  like  proceedings  shall  be  had,  to  determine  «.'/«icA, 
or  whether  either  of  the  applicants  is  entitled  to  receive  a  patent  as 
prayed  for." 

The  question  of  priority  of  right  or  invention  necessarily  imphes 
interference.  The  Commissioner,  before  he  could  decide  the  question 
of  priority,  must  have  decided  that  of  interference  ;  for  without  inter- 
ference there  can  be  no  question  of  priority.  Before  I  can  have 
jurisdiction  of  the  question  of  priority,  I  must  be  satisfied  that  there 
is  an  interference  ;  and  I  must  decide  the  question  of  jurisdiction  as 
well  as  any  other  question  which  arises  in  the  cause. 

The  opinion  of  the  Commissioner,  [mentioned  in  the  8th  section, 
that  interference  exists,]  only  justifies  him  in  giving  notice  thereof  to 
the  other  applicant,  and  appointing  a  day  to  hear  the  parties  upon 
that  question.  He  decides  it  only  pro  hac  vice  ;  and  for  that  purpose 
only.  Upon  that  hearing  he  is  to  decide  ;  and  from  that  decision,  if 
either  shall  be  dissatisfied  with  it,  on  the  question  of  priority,  includ- 
ing that  of  interference,  he  may  appeal ;  and  upon  such  appeal  as  I 
understand  the  law,  the  judge,  in  case  of  real  interference,  may 
"  determine  which,  or  whether  either  of  the  applicants  is  entitled  to 
receive  a  patent  as  prayed  for."  The  scope  thus  given  to  the  judge, 
is  broad  enough  to  include  the  question  of  interference,  as  well  as 
that  of  priority,  if  it  should  arise. 

By  the  Act  of  1839;  ch.  88,  §  11,  it  is  enacted  "That  in  all  cases 
where  an  appeal  is  now  allowed  by  law  from  the  decision  of  the 
Commissioner  of  Patents,  to  a  board  of  examiners  provided  for  in  the 
7th  section  of  the  act  to  which  this  is  additional,  the  party,  instead 
thereof,  shall  have  a  right  to  appeal  to  the  Chief  Justice  of  the  Dis- 
trict Court  of  the  United  States  for  the  District  of  Columbia  by  giving 
notice  thereof  to  the  Commissioner,  and  filing  in  the  Patent  Ofliice 
within  such  time  as  the  Commissioner  shall  appoint,  his  reasons  of 
appeal  specifically  set  forth  in  writing;  and  also  paying  into  the 


574  JUDGE  cranch's  decisions. 

Patent  Office,  to  the  credit  of  the  patent  fund,  the  sum  of  twenty-five 
dollars. 

"  And  it  shall  be  the  duty  of  the  said  Chief  Justice,  on  petition,  to 
hear  and  determine  all  such  appeals,  and  to  revise  such  decisions,  in 
a  summary  way,  on  the  evidence  adduced  before  such  a  Commis- 
sioner, at  such  early  and  convenient  time  as  he  may  appoint ;  first 
notifying  the  Commissioner  of  the  time  and  place  of  hearing ;  whose 
duty  it  shall  be  to  give  notice  thereof  to  all  parties  who  appear  to  be 
interested  therein,  in  such  manner  as  the  said  judge  shall  prescribe. 

"  The  Commissioner  shall  also  lay  before  the  said  Judge  all  the 
original  papers  and  evidence  in  the  case,  together  with  the  grounds  of 
his  decision,  fully  set  forth  in  writing,  touching  all  the  points  involved 
by  the  reasons  of  appeal ;  to  which  the  revision  shall  be  confined." 

One  of  the  reasons  of  appeal  in  this  case,  is,  *  That  there  is  no 
real  and  substantial  interference  between  the  two  applications. 

The  question  of  interference,  therefore,  is  involved  by  the  reasons 
of  appeal,  and  must  be  decided  by  the  judge.  By  limiting  the  juris- 
diction of  the  judge,  to  the  points  involved  by  the  reasons  of  appeal, 
the  legislature  has  affirmed  it  to  that  extent. 

The  interference  mentioned  in  the  8th  section  of  the  Act  of  1836, 
must  be  an  interference  in  respect  to  patentable  matters  ;  and  the 
claims  of  the  applicants  must  be  limited  to  the  matters  specifically 
set  forth,  as  their  respective  inventions ;  and  what  is  not  thus  claimed, 
may,  for  the  purpose  of  this  preliminary  inquiry,  be  considered  as 
disclaimed. 

The  question  then  is,  does  Mr.  Bain  claim  a  patent  for  any  matter 
now  patentable,  for  which  Mr.  Morse  claims  a  patent  ? 

To  answer  this  question,  it  is  necessary  to  ascertain  for  what  patent- 
able matter  Mr.  Morse  now  claims  a  patent. 

In  his  specification,  filed  Jan.  20,  1848,  he  says  r 

"  What  I  claim,  as  my  own  invention  and  improvement,  is  the  use 
of  a  single  circuit  of  conductors  for  the  marlring  of  my  Telegraphic 
signs  already  patented,  for  numerals,  letters,  words  and  sentences,  by 
means  of  the  decomposing,  coloring  or  bleaching  eflfects  of  electricity 
acting  upon  any  known  salts  that  leave  a  mark  as  the  result  of  the 
said  decomposition,  upon  paper,  cloth,  metal,  or  other  convenient  and 
known  markable  material.  I  also  claim  the  invention  of  the  machin- 
ery as  herein  described,  for  the  purpose  of  applying  the  decomposing, 
coloring,  or  bleaching  effects  of  electricity  acting  upon  known  salts 
as  herein  before  described." 


JUDGE    CRANCH  S    DECISIONS.  575 

The  Commissioner  in  his  written  decision  in  this  case,  says  :— 
"  Such  use  of  a  single  circuit  [i.  e.  to  produce  marks  upon  chemically 
prepared  paper]  is  not  the  point  at  issue  ;  nor  is  this  claimed  by  either 
party.  Said  Morse  claims  using  a  single  circuit  of  conductors,  for 
a  certain  purpose,  or  in  a  certain  way  ;  viz.,  to  mark  his  telegraphic 
signs ;  and  also  claims  the  machinery  by  which  he  accomplishes  this 
purpose.  Said  Bain  does  not  specifically  mention  in  his  claim,  using 
a  single  circuit,  though  this  must  be  considered  as  an  essential  part 
of  his  invention  and  claim,  and  is  necessarily  involved  in  the  final 
clause  of  his  claim,  to  wit :  "  So  that  in  either  case  these  form  the 
received  communication,  substantially  in  the  manner  and  with  the 
effects  described  and  shown." 

The  Commissioner  proceeds  —  The  third  clause  of  the  claim  of 
said  Bain  with  which  the  true  claims  of  said  Morse  interfere,  is  as 
follows,  to  wit  : 

"Third.  —  The  application  of  any  suitable  chemically  prepared 
paper,  without  regard  to  the  chemical  ingredients  used  for  such  a 
purpose^  to  receive  and  record  signs  forming  such  communications, 
such  signs  being  made  by  the  pulsations  of  an  electric  current  or  cur- 
rents, transmitted  from  a  distant  station,  said  current  operating  directly, 
and  without  the  intervention  of  any  secondary  current  or  mechanical 
contrivance,  through  a  suitable  metal  marking  style  that  is  in  contin- 
uous contact  with  the  receiving  paper,  thereby  making  marks  thereon, 
which  marks  correspond  with  the  groups  of  perforations  in  the  paper 
composing  the  transmitted  communication  ;  or  may  be  given  by  the 
pulsations  from  the  spring  45  and  block  46,  so  that  in  either  case 
these  form  the  received  communication  substantially  in  the  manner, 
and  with  the  effects  described  and  shown  ;  including  any  merely 
practical  variations,  analogous  and  equivalent  in  the  means  employed 
and  the  effects  produced  thereby." 

The  Commissioner,  in  his  written  decision,  says : 

"  The  invention,  it  will  be  seen  by  reference  to  the  specifications 
of  the  parties  respectively,  does  not  consist  in  the  use  of  the  electric 
current  to  make  marks  upon  chemically  prepared  paper ;  nor  making 
marks  through  a  single  line  of  conductors  ;  nor  could  a  claim  to 
either  of  these  devices  have  been  entertained  as  patentable,  as  they 
have  been  long  known." 

Again — It  is  said  by  the  counsel  of  Mr.  Morse,  "it  is  admitted 
that  neither  could  patent  the  lattery,  the  circuit,  the  prepared  paper, 
or  the  marking  by  the  electro-chemical  process  —  it  was  only  a  neto 


576  JUDGE    CRANCH  S    DECISIONS. 

comhination  of  the  several  parts  so  as  to  produce  a  new  result,  or  an 
old  result  in  a  better  manner,  that  either  could  patent." 

Again  —  The  Commissioner,  in  his  "  reasons  of  decision  "  says  — 
"  it  is  true,  as  Mr.  Bain  asserts,  that  no  one  can  monopolize  the  use 
of  air,  fire,  or  water,  but  it  is  equally  true  that  any  one  can  monopo- 
lize the  use  of  air,  fire,  or  water  upon  certain  principles  of  operation 
which  he  may  have  invented  or  discovered,  and  this  is  precisely  what 
the  respective  claimants,  in  this  case  demanded  as  their  rights,  and 
gave  rise  to  the  interference,  viz  :  each  claimed  the  right  to  use  and 
exclude  others  from  using,  galvanic  power  to  mark  certain  signs 
[which  signs  have  been  already  patented  by  said  Morse]  upon  chem- 
ically prepared  paper  through  a  single  circuit  of  conductors. 

"  A  single  circuit  of  conductors,  consisting  either  wholly  of  wire, 
or  in  part  of  wire  and  part  of  earth,  for  telegraphic  purposes  was  not 
neiv.  The  signs  or  signals  to  be  marked  were  not  new  ;  —  the  same 
having  been  before  patented  by  said  Morse  ;  —  and  chemically  pre- 
pared paper,  for  receiving  telegraphic  signs  by  galvanism,  was  not 
new ;  the  same  having  been  patented  in  England,  in  1838,  by  Mr.  E. 
Davy.  Moreover,  the  use  of  a  single  telegraphic  circuit,  for  marking 
the  aforesaid  signs  upon  paper,  was  not  new,  the  same  having  been 
before  patented  by  said  Morse. 

"  Neither  party  claimed  any  one,  or  any  two  of  the  above  ele- 
mental features.  The  invention  of  each  was  made  up  of  the  three 
combined  ;  and  the  advantages  claimed  to  have  been  discovered  by 
each,  in  these  combined  operations,  were  identical." 

If  then,  these  matters  are  not  now  patentable  in  themselves  there 
is  nothing  patentable  in  Mr.  Morse's  claim,  left  to  be  interfered  with, 
except  his  claim  of  a  patent  for  his  invention  of  the  machinery 
described  in  his  specification,  or  for  his  combination  of  machinery 
and  materials,  as  described  therein.  The  claim  of  each  applicant, 
therefore,  is  reduced  to  the  claim  fur  the  combination  of  machinery 
and  materials  which  he  has  invented,  and  does  not  include  any  of  the 
matters  claimed  in  his  specifieation  which  are  not  now  patentable. 

These  combinations  seem  to  me  to  be  far  from  identical.  Mr. 
Bain  includes  in  his  combination  the  use  of  the  perforated  paper  for 
composing  the  communication  ;  and  of  the  style  which  passes  the 
electric  current  through  the  perforated  paper  ;  and  the  machinery  for 
transmitting  the  same  communication  to  several  different  places  at 
the  same  time.  It  is  said  that  the  style  is  not  new  ;  —  but  he  makes 
it  an  ingredient  in  his  combination  — and  in  that  respect,  his  connbi- 


i 


■  'e 


JUDGE     CRANCH  S    DECISIONS.  577 

nation  differs  from  that  of  Mr.  Morse,  and  it  is  a  very  important  item 
in  connection  with  the  perforated  paper.  He  includes,  in  his  combi- 
nation, new  patentable  matter  with  old  matter,  not  patentable,  and 
thereby  makes  a  new  patentable  combination.  This  new  matter  thus 
introduced  into  the  new  combination  is  admitted  to  be  patentable  in 
itself  without  combination  with  the  old  unpatentable  matter,  and 
indeed  it  seems  to  be  a  great  improvement  in  the  transmission  of  tel- 
egraphic information. 

But  it  is  said  that  Mr.  Bain  is  only  authorized  to  obtain  a  separate 
patent  for  each  of  those  inventions,  and  cannot  claim  a  patent  for  his 
new  combination  of  the  old  and  new  together.  If,  however,  his  new 
combination  of  old  materials  be  patentable  [which  must  bo  admitted, 
or  it  would  not  interfere  with  Mr.  Morse's  claim]  it  seems  to  be  not 
the  less  patentable,  because  it  includes  the  new  matter  in  connection 
with  the  old.  The  old  matter  may  not,  in  itself,  be  patentable,  but 
joined  to  the  new  matter,  a  combination  may  be  formed  which  may 
be  patented.  Fie  is  not  obliged  to  take  separate  patents  for  each  new 
patentable  matter.  He  does  not  now  ask  for  them  ;  he  may  be  will- 
ing to  ask  only  for  a  limited  use  of  those  new  matters,  to  loit,  in 
comhination  ;  and  not  for  an  exclusive  use  of  them  for  every  pur- 
pose to  which  they  may  be  applicable. 

Mr.  Godson  (in  p.  63,)  says  —  "a  combination  or  arrangement  of 
old  materials,  when,  in  consequence  thereof  a  new  effect  is  pro- 
duced, may  be  the  subject  of  a  patent.  This  effect  may  consist 
either  in  the  production  of  a  new  article,  or  in  making  an  old  one  in 
a  better  manner,  or  at  a  cheaper  rate."  "  This  manufacture  may 
be  made  of  different  substances  mingled  together:  or  of  different 
machines  formed  into  one  ;  or  of  the  arrangement  of  many  old  com- 
binations." "  Each  distinct  part  of  the  manufacture  may  have  been 
in  common  use,  and  every  principle  upon  which  it  is  founded  may 
have  been  long  known,  and  yet  the  manufacture  may  be  the  proper 
subject  for  a  patent.  It  is  not  for  those  parts  and  principles,  but  for 
the  new  and  useful  compound,  or  thing  thus  produced  by  combina- 
tion, that  the  grant  is  made  ;  it  is  for  combining  and  using  things 
before  known,  with  something  then  invented,  so  as  to  produce  an 
effect  which  was  never  before  attained." 

The  counsel  of  Mr.  Morse,  in  argument,  said  : 

"  It  is  obvious,  and  is  admitted  by  our  adversaries,  that  Morse's 
instrument  is  a  very  different  thing,  in  its  form  and  structure  from 
Bain's."  But  form  and  structure  are  very  important  matters  in 
49 


578  JUDGE  cranch's    decisions. 

machinery ;  and  if  they  enable  the  operator  to  do  the  work  in  a  bet- 
ter manner,  or  with  more  ease,  or  less  expense,  or  in  less  time,  it  is 
no  interference  ;  but  is  an  improvement  for  which  the  inventor  may 
have  a  patent. 

When  the  application  is  for  a  patent  for  a  combination  of  machin- 
ery and  materials,  form  and  structure  become  sulstance  ;  they  are 
of  the  essence  of  the  invention  ;  and  an  admission  that  Morse's  instru- 
ment is  a  very  different  thing,  in  its  form  and  structure,  from  Bain's, 
is  an  admission  of  a  fact  which  is  prima  facie  evidence  at  least,  that 
there  is  no  interference  between  the  two,  and  throws  the  burden  of 
proof  on  the  other  side. 

There  was  no  evidence  laid  before  the  Commissioner  of  Patents 
upon  the  question  of  interference  ;  so  that  he  must  have  adjudged  the 
interference  upon  a  comparison  of  the  two  specifications  ;  possibly 
without  considering  that  the  only  patent  which  either  could  obtain, 
would  be  a  patent  for  his  own  combination  —  all  the  materials,  of 
which  Mr.  Morse's  combination  consists,  being  old  and  not  now 
patentable. 

The  question  is  not  now,  whether  the  claims  of  Mr.  Bain  and  Mr. 
Morse  interfere  as  to  matters  not  now  patentable  ;  but  whether  they 
interfere  as  to  matters  now  patentahle ;  and  the  only  matter  now 
patentable,  in  Mr.  Morse's  specification,  is  his  own  combination  of 
machinery  and  materials.  That  combination  constitutes  his  machine  } 
and  his  machine  is  admitted  to  be  a  very  different  thing,  in  its  form 
and  structure  from  Mr.  Bain's.  Form  and  structure  constitute  the 
identity  of  machinery.  The  combination  consists  in  form  and  struc- 
ture ;  and  the  patent  if  issued,  will,  I  presume,  be  issued  fpr  the /or»» 
and  structure  of  the  instrument. 

It  being  admitted  that  the  form  and  structure  of  Mr.  Bain's  instru- 
ment is  very  different  from  Morse's,  there  can  be  no  interference  in 
that  respect,  and  if  form  and  structure  constitute  the  identity  of 
machinery  there  is  no  interference  in  the  Iwo  instruments  ;  and  if 
the  instruments  are  the  combinations,  or  the  result  of  the  combina- 
tions, for  which  patents  are  now  claimed,  there  is  no  interference  in 
the  two  instruments  in  regard  to  any  matter  now  patentable. 

But  it  is  not  necessary  to  rely  alone  upon  the  admission  of  Mr. 
Morse's  counsel  to  show  that  there  is  a  great  difference  between  the 
machinery  used  by  the  contending  applicants  to  effect  the  object ; 
that  is,  the  rapid  transmission  of  intelligence  by  the  power  of  the 
electric  current.  Any  one  who  will  compare  the  two  specifications 
and  drawings  and  models,  will  at  once  perceive  that  difference. 


JUDGE    CRANCh's    DECISIONS.  579 

A  patentable  improvement  is  not  an  interference. 

The  Commissioner  in  his  written  decision,  says  :  "  It  appears  from 
the  records  of  the  office,  that  the  application  by  said  Alexander  Bain, 
subject  of  Great  Britain,  was  made  April  18,  1848,  and  upon  exam- 
ination of  his  claims,  it  was  found  that  the  before-mentioned  claim 
could  be  admitted  to  patent,  no  invention  of  a  like  character,  appear- 
ing in  the  public  records  of  the  office  ;  nor  in  any  printed  publication. 
Prior,  however,  to  the  final  issue  of  the  case,  the  secret  archives 
were  consulted  ;  and  it  was  found  that  an  application,  filed  by  Sam- 
uel F.  B.  Morse,  January  20,  1848,  had  been  there  deposited,  in  com- 
pliance with  provisions  of  law,  which  presented  claims  conflicting 
with  those,  before  mentioned,  set  up  by  said  Bain." 

This  shows  that  but  for  the  supposed  interfering  claim  of  Mr. 
Morse,  Mr.  Bain  was  entitled  to  his  patent ;  and  if  there  be  no  inter- 
ference in  respect  to  patentable  matter,  he  is  still  entitled  to  a  patent 
for  his  own  combination. 

But  the  counsel  for  Mr.  Morse  say  :  "  There  is  an  interference  — 
that  Bain's  third  claim  palpably  covers  the  whole  of  Morse's  first 
claim  ;  and,  if  granted,  Bain  could  do  all  that  Morse  claims  an  exclu- 
sive right  to  do  ;  he  could  write  Morse's  characters  precisely  as 
Morse  does  ;  and  that  therein  consists  the  interference." 

But  the  only  matter  now  patentable,  and  claimed  in  Mr.  Morse's  « 
specification,  is  his  peculiar  combination  of  materials  and  machinery 
as  therein  described.  All  the  materials,  used  in  that  combination, 
are  old  ;  and  he  will  not,  under  this  patent,  be  entitled  to  the  exclu- 
sive use  of  any  of  them  separately,  or  in  any  other  combination  than 
that  which  he  has  described  in  his  specification.  There  cannot  be  a 
patent  for  a  principle ;  nor  for  the  application  of  a  principle ;  nor  for 
an  effect.  Two  persons  may  use  the  same  principle  and  produce  the 
same  effect  by  different  means,  without  interference  or  infringement, 
and  each  would  be  entitled  to  a  patent  for  his  own  invention.  —  God- 
son, 63,  68,  74. 

So,  in  the  present  case,  although  the  power  used  by  both  applicants 
is  the  same,  and  the  subject  the  same,  yet,  as  the  effect  is  produced 
by  means  which  appear  to  me  so  different  as  to  prevent  an  inter- 
ference, the  question  of  priority  of  invention  does  not  arise.  It  is, 
therefore,  not  a  case  under  the  8th  section  of  the  act  of  1836,  but 
under  the  7th  section  of  the  same  act.  So  that  each  of  the  applicants 
may  have  a  patent  for  the  combination  which  he  has  invented  and 
claimed  and  described  in  his  specification  —  provided  he  shall  have 
complied  with  all  the  requisites  of  the  law  to  entitle  him  to  a  patent. 


580  JUDGE    CRANCH  S    DECISIONS. 

If  this  were  a  doubtful  question,  I  should  think  it  my  duty  to  render 
the  same  judgment,  so  as  to  give  Mr.  Bain  the  same  right  to  have  the 
validity  of  his  patent  tested  by  the  ordinary  tribunals  of  the  country, 
which  Mr.  Morse  would  enjoy  as  to  his  patent ;  and  finally,  to  obtain 
the  judgment  of  the  Supreme  Court  of  the  United  States  upon  it. 
For  if  the  Commissioner  and  the  Judge  should  reject  Mr.  Bain's 
application  for  a  patent,  the  decision  would  be  final  and  conclusive 
against  him,  unless  he  could  obtain  relief  by  a  bill  in  equity  under 
the  16th  section  of  the  act  of  1836,  and  the  10th  section  of  the  act  of 
1839  ;  which,  it  is  said,  is  doubtful. 

I  am,  therefore,  of  opinion,  and  so  decide : 

That  there  is  no  interference  in  the  claims  of  these  applicants,  in 
relation  to  any  matter  (contained  in  their  respective  specifications) 
noiv  palentahle  ;  and,  therefore,  that  Samuel  F.  B.  Morse  is  entitled 
to  a  patent  for  the  combination  which  he  has  invented,  claimed,  and 
described  in  his  specification,  drawings,  and  model.  And  that  Alex- 
ander Bain  is  entitled  to  a  patent  for  the  combination  which  he  has 
invented,  claimed,  and  described  in  his  specification,  drawings  and 
model ;  provided  they  shall  respectively,  have  complied  with  all  the 
requisites  of  the  law,  to  entitle  them  to  their  respective  patents. 

I  deem  it  unnecessary,  therefore,  to  decide  upon  any  other  points 
involved  by  the  reasons  of  appeal.  W.  CRANCH. 

Washington,  D.  C.  March  13,  1849. 


INDEX. 


N.  B.     The  references  in  this  index  are  to  the  sections,  unless  otherwise  indicated  by 
the  abbreviation  p.,  which  refers  to  the  page, 

A. 

ABANDONMENT  OF  EXPERIMENTS.     (See  Experiments.) 

ABANDONMENT  OF  INVENTION, 

destroys  right  to  a  patent      .....         57,  GO 

ought  to  be  clearly  proved  ....  57 

how  shown  on  the  part  of  the  patentee  57,  note,  60,  296 

by  acquiescence  in  public  use  or  sale      .         .         .  296, 

not  by  making  for  experiment        ....  297 

conclusive  evidence  of  .....  298 

no  length  of  time  required  to  prove         .         .         .  300 

how  far  the  intention  is  material  .         .  301-303 

not  by  experimental  practice  by  the  inventor  .  304 

not  by  piratical  user      ......  306 

modifications  of,  by  statute  of  1839  307-310,  p.  493 


a  good  defence  to  an  action  for  infringement 
a  good  defence  to  a  bill  in  equity 
ACCIDENT, 

may  lead  to  invention  or  discovery         .         • 
ACCOUNT  OF  PROFITS, 

when  ordered  in  lieu  of  granting  an  injunction 
upon  what  principle  granted 
extends  to  all  the  articles  made 
ACTION  AT  LAW, 

a  remedy  for  infringement 
in  whose  name  to  be  brought 

of  grantee  for  particular  district 

of  assignee 

of  assignee  and  patentee 

of  patentee 
may  be  maintained  against  corporations 
declaration  in,  what  should  show 

that  plaintiff  was  first  inventor 

that  subject-matter  was  new  and  useful 
49* 


296 
,     351,  352 

6,  Ih.  note. 

346 
346 

348 

257 
258 
259 
260,  261 
260 
260 
260 
262 
263 
264 


582 


INDEX. 


ACTION  AT  LAW,   Continued. 

whether  the  citizenship  of  patentee 

that  patent  was  obtained  in  due  form  of  law 

the  substance  of  the  grant     . 

the  value  of  the  patent 

the  breach  by  defendant 

damages  sustained  by  plaintiff 

what,  when  plaintiff  sues  as  assignee 

omission  in,  when  cured  by  verdict 

at  trial  in,  when  proof  of  recording  assignment 
may  be  given  .... 

pleadings  and  defences  in 

statute  provisions  concerning 
defendant  may  plead  general  issue 


265 
265 
266 
267 
267 
267 
268 
268 


269 

270 

270-272,  p.  480 

270,  p.  480 


defences  under  general  issue  without  notice 
that  defendant  never  did  the  act  com 

plained  of 

that  plaintiff  was  not  entitled  to  a  patent 
that  plaintiff  has  not  a  good  title  as  as 
signee        ..... 

that  the  patent  was  not  duly  issued 
that  the  invention  was  not  a  patentable 
subject       .... 

want  of  utility  in  the  invention 
''  want  of  an  intelligible  specification 

defences   under   the   general   issue  requiring 
notice       ...... 

the  statute  itself 

concealment  or  addition  in  specifications 

want  of  novelty  in  subject-matter 

prior  dedication  of  the  invention  to  the 

public 

that  the   patent  was   obtained   surrepti- 
tiously 

that  the  invention  was  unreasonably  with 
held  from  the  public 
not  a  complete  remedy  in  all  cases 
ADDITIONS, 

how  to  be  described  in  specifications 
to  patents,  how  made 
ADMINISTRATORS  AND  EXECUTORS, 
when  may  take  out  patent 
may  apply  for  extension 
may  amend  specifications 


274-277 

274 
274 

274 
274 

275 
276 
277 

278-313 

278 
279-282 
283-295 

296-310 

311-312 

313 
314 


pp.  193-202 
180,  pp.  479,  488,  489 

114,  p. 477 

117 

.       167,  180,  185 


INDEX.  583 

AFFIDAVIT, 

in  support  of  motion  for  injunction         .         .         .      320,  322 
when  read  in  support  of  title         ....      354,  355 

AFFIRMATION.     (See  Oath.) 

when  substituted  for  an  oath         ....  p.  491 

AGENTS, 

to  receive  and  forward  models,  &c.,  to  be  appointed  p.  490 

AGRICULTURAL  STATISTICS, 

to  be  collected  by  Commissioner  ...  p.  493 

ALIENS, 

may  take  out  patent  in  United  States  .  115,  116,  p.  496 

may  file  caveat  ...'...  170,  p.  478 

ALTERATION  OF  SPECIFICATIONS,     (^ee  Amendments.) 

AMBIGUITY, 

effect  of,  in  specifications  .         131,  134,  137,  139,  151 

AMENDMENTS, 

of  specifications  allowed  by  statute       .         .  166,  p.  479 

by  disclaimer       ....  167,  180,  pp.  205,  488 

ANALOGOUS  USE, 

what  is 7,12,26,85-87 

not  subject  of  a  patent  .....  85 

APPEALS, 

to  the  Supreme  Court,  when  allowed  pp.  405,  406,  482 

from  decision  of  Commissioner  pp.  475,  476,  478,  494 

APPLICANT  FOR   PATENT, 

who  may  be,  under  the  statute              .         .         .      114,  115 
to  make  oath                 .         .         .            171,  172,  173,  p.  474 
to  pay  money  into  the  treasury              .         .  175,  p.  479 
may  appeal  from  the  decision  of  the  Commis- 
sioner                pp.  475,  476 

APPLICATION  FOR  PATENT, 

to  be  made  in  writing  ....  171,  p.  473 

to  be  by  petition I'^'l,  p.  473 

to  be  accompanied  with  specifications  120,  121,  p.  475 

when  withdrawn  .         .         .         .         •         •         p.  475 

when  they  interfere       ......         p.  476 

ARTS,  USEFUL, 

when  subject  of  a  patent  .         .  2,90-92,103 

fine  arts  not  patentable  .....  90 

re-discovery  of,  whether  or  not  patentable      .         .         38,  39 
ASSIGNEES  OF  PATENT, 

rights  of,  in  case  of  extension         118,  lb.  note,  119,  192,  193 
in  case  of  renewal         .         •         •        183,  76.  note. 
when  a  party  to  a  suit,  for  infringement 

192,  193,  260,  261,  p.  490 


584 


INDEX. 


ASSIGNEES  OF  PATENT,  Continued. 

when  may  amend  specifications  167,  168,  180,  185,  194 

may  bring  a  bill  for  an  injunction  .         .  316,  p.  490 

in  bankruptcy      .......  189 

ASSIGNMENT  OF  PATENT, 

allowed  at  common  law        .....  189 

does  not  include  a  right  to  the  extension       .         .118,  note. 
how  made  according  to  statute      .         .         .  188,  p.  478 

may  be  made  before  patent  is  taken  out         .         .  189 

when  by  operation  of  law  ....  189 

when  to  be  recorded  ,         .         .  190 -192,  p.  478 

how  affected  in  case  of  surrender  by  patentee        .  192 

distinguished  from  a  license  .         .         .  195  - 197 

when  may  be  recorded  anew         ....  p.  485 

ASSISTANT  EXAMINERS, 

to  be  appointed  in  patent  office  .         .         pp.  492,  498 

compensation  allowed  to  ....  p.  498 

B. 

BANKRUPTCY, 

of  patentee,  vests  patent  in  his  assignees       .         .  189 

BILL  IN  EQUITY, 

what  it  should  contain 

when  brought  upon  title  of  an  assignee 

should  be  sworn  to       ...         . 

how  affected  by  subsequent  renewal  of  patent 
BOARD  OF  EXAMINERS, 

when  to  be  appointed 

their  power  and  duties 


, 

1 . 

320 

. 

320 

. 

320 

nt 

321 

pp. 

475, 

476, 

478. 

. 

pp. 

475, 

476. 

CAVEAT, 

when  allowed  by  statute         ....  170,  p.  478 

to  be  filed  in  confidential  archives  of  patent  ofBce      170,  p.  478 
may  be  filed  by  an  alien,  when,        .         .         .  170,  p.  478 

CHANCERY.     {See  Equity.) 
CHANGE, 

of  former  proportions  of  a  machine,  not  patentable  3 

vphen  unimportant 7,  8,  22 

materiality  of,  how  determined     .         .  8,  9,  13,  note,  21 

utility  of,  a  test  of  invention         .         .         .         .      8,  12,  15 
of  form  or  proportions,  not  a  discovery  .         .      17,  note. 

of  principle,  when  there  is  ....  21 

by  omitting  a  usual  ingredient      ....  81 


I 


INDEX. 


585 


p. 
p. 
p. 

p. 
p. 

405,  p. 
405,  p. 


471 
471 
471 

494 
495 

48-2 
406 

482 


CHIEF  CLERK  OF  PATENT  OFFICE, 

how  appointed  .... 

his  duties  ..... 

his  salary  ..... 

CHIEF  JUSTICE, 

to  hear  appeals  in  certain  cases     . 
his  compensation  therefor     . 
CIRCUIT  COURT, 

have  cognizance  of  patent  causes 
jurisdiction  of,  exclusive 
appeal  from,  lies  to  Supreme  Court 
CLASSIFICATION  OF  MODELS, 

to  be  made  by  Commissioner 
CLERKS  OF  COURTS, 

when  to  transmit  copies  of  patents 
CLERKS  OF  PATENT  OFFICE, 

to  be  appointed  by  the  Commissioner 

pp.  471,  472,  490,  492,  499 
COLORABLE  VARIATIONS, 

not  subject  of  a  patent  .....  7 

COMBINATION, 

a  new,  when  subject  of  a  patent 
COMMISSIONER  OF  PATENTS, 

application  to  be  made  to  ... 

to  sign  patent      ...... 

when  may  correct  mistakes 

"acting  commissioner,"  recognized  by  law 

opinion  of,  when  not  re-examinable 

to  decide  whether  an  extension  shall  be  granted 


p.  484 


p.  485 


24,  73,  94,  110 


171,  p.  473 

176,  p.  473 

177 

178 

181,  lb.  note. 

187,  p.  498 


to  be  appointed  by  the  President 

general  duties  of  ..... 

compensation  allowed  to       ...         . 

to  make  oath  before  entering  on  his  duties 
to  give  bonds,  with  sureties 
to  make  examination  of  inventions 
duty  of,  in  case  of  interfering  applications 
to  make  classification  of  models 
authorized  to  draw  money  from  patent  fund 
to  make  an  annual  statement  of  expenditures,  &c 
to  make  an  annual  list  of  patents 
COMPOSITION  OF  MATTER, 

when  the  subject  of  a  patent 

includes  what      ...... 

test  of  novelty  in  .         .         .         . 


471 
471 

471 

472 
472 
474 
476 
484 
491 
491 
491 


2,  103,  104 
103 
104 


386 


INDEX. 


211-214 


151,  159,  270,  280 


COMPOSITION  OF  MATTER,   Continued. 

patent  for,  how  infringed 
CONCEALMENT, 

when  it  vitiates  specifications 
CONGRESS, 

may  pass  general   or    special   laws  in    favor   of 

inventors  .... 

may  pass  retrospective  laws 
CONSTRUCTION, 

of  patent,  by  the  court 
judged  of  by  the  jury 
to  be  liberal         .... 
rule  of,  in  specifications 
principles  of        ...         . 
COPY, 

constitutes  an  infringement  ....        38,  202,  220 

of  patent,  mistakes  in,  how  corrected  .         .         .  177 

of  records,  &c.  under  seal,  when  to  be  evidence  pp.  474,  486 

of  patents,  descriptions,  &c.,  when  to  be  sent  to  Com- 


403 

• 

404 

123,  130,  136, 

150 

.        123,  124, 

136 

.       126, 

132 

.       132, 

387 

.      386  - 

-394 

168,  288,  293,  p 


missioner  by  Clerks  of  Courts 
CORPORATION, 

may  be  sued  for  infringement 
COSTS, 

when  awarded  by  discretion  of  Court 
when  not  allowed  the  plaintiff 
COUNSEL  FEES, 

when  allowed  to  the  plaintiff 
COURT, 

province  of,  to  construe  patents 
questions  of  law  to  be  determined  by 
what  constitutes  novelty 
what  constitutes  sufficiency  of  invention 
whether  the  patent  is  void,  as  being  against  public 

policy     ..... 
whether  the  invention  is  frivolous 
extent  of  the  claim  in  specifications 
principles  which  guide,  in  construing  specifications 
how  far  may  receive  evidence  of  invention 
to  decide  what  the  specification  has  said 
to  decide  whether  the  invention  is  patentable 
COURT  OF  EQUITY,     (See  Equity.) 

may  restrain  infringements  by  injunctions 

ground  of  jurisdiction  of, 

discretion  vested  in  ... 


485 

260 

286 
490 

254 


123,  130 

136, 150 

379 

380 

380 

public 

383 

384 

385 

ons 

386-394 

390 

395,  397 

401 

314 

314 

315 

INDEX. 


587 


DAMAGES, 

rule  of,  for  infringement 
actual,  what  is  meant  by 
may  be  trebled  by  the  Court 
when  merely  nominal 

when  may  include  counsel  fees  and  expenses  of 
witnesses  .         .  ' 

allowed  for  infringement  after  the  destruction  of 

patent  office 
how  recovered 
DEATH,  

of  inventors,  before  taking  out  patent 
DECLARATION,  '         '        ' 

what  it  should  set  forth,  in  an  action 

that  plaintiff  was  first  inventor 

that  the  subject-matter  was  new  and  useful 

whether  the  citizenship  of  patentee 

that  patent  was  properly  obtained 

the  substance  of  the  grant 

the  value  of  the  patent 

the  breach  by  defendant       .         .         .         , 

damages  sustained  by  the  plaintiff 

when  the  plaintiff  sues  as  assignee 

omission  in,  when  cured  by  a  verdict 
DEDICATION.     (See  Abandonment  of  Invention  ) 
DEFENCES.     (See  Action  at  Law,  Equity.) 

to  actions  at  law 

to  a  bill  in  equitv 
DEPARTMENT  OF  STATE, 

patent  office  attached  to 
DESCRIPTION, 

of  a  machine,  may  be  part  in  writing,  and  part  by 

drawings  •         .         .         .         . 

prior,  in  a  public  work,  invalidates  a  patent 
what  constitutes  such  description 
DESIGNS, 

when,  the  subject  of  a  patent 
include  tradesmen's  marks 
DISCLAIMER, 

when  allowed  by  statute 

by  whom  made 

to  be  recorded  in  the  patent  office 

to  be  taken  as  part  of  the  specifications 


250 

250,  251 
250,  p.  480 
252,  253 

254 

256 
p.  480 

p.  477 

262 
263 
264 
265 
265 
266 
267 
267 
267 
268 
268 


270-313 
351 

p.  471  ' 


163 

62,  283 
65,  292 


105,  106,  p.  496 
106 

167,  185,  287,  p.  488 

167,  185,  287,  p.  488 

167,  287,  p.  489 

167,  287,  p.  489 


588 


INDEX. 


DISCLAIMER,   Continued. 

how  to  affect  an  action  pending 
effect  of  as  to  costs 

DISTRICT  COURT, 

when  it  has  cognizance  of  patent  causes 

DOUBLE  USE.     (See  Analogous  Use.) 

DRAWINGS, 

to  accompany  specifications 
form  a  part  of  specifications 
whether  to  be  drawn  on  a  scale 
duplicates  of  to  be  furnished 

DUPLICATES, 

of  models  and  drawings,  when  required 


167,  287,  p.  489 
168,  288,  295,  p.  490 

405,  p.  482 


121,  163,  p.  474 

.      122,  163 

164 

p.  488 

pp.  487,  488 


E. 


EFFECT, 


in  the  abstract,  not  patentable 


4,  23,  note,  27,  75,  96,  note. 


EQUITY, 


court  of  may  restrain  infringements  by  injunctions     .  314 

grounds  of  jurisdiction  of         ....         .  314 
general   principles   of,   to   regulate  the  granting  of 

injunctions            .......  314,  315 

parties  entitled  to  relief  in 316 

same  in  general  as  in  actions  of  law            .         .  316,  317 
distinction  in  case  of  assignment  for  a  partic- 
ular district 318,  319 

bill  in,  what  it  should  contain           ....  220 

should  be  sworn  to             .....  220 

how  affected  by  a  subsequent  renewal  of  patent  321 

injunctions,  on  what  principles  granted     .         .          .  322 

application  for,  to  be  accompanied  with  an  affidavit  322,  354 

notice  to  be  served  on  the  defendant            .         .  323,  354 

not  granted  on  ex  parte  applications            .         .  323 
when  patentee  must  first  establish  his  right  by 

action  at  law         ......  324 

rule  laid  down  by  Lord  Eldon             .         .         .  324 

rule  adopted  by  our  courts         ....  325 

three  classes  of  cases  under       ....  326 

when  no  opposing  evidence  is  offered         .         .  327 

when  opposing  evidence  is  offered     .         .         .  328-335 

when  there  is  a  full  hearing     ....  336 

prima  facie  right  to  ...        328,  339,  342,  354 

when  not  granted  simpliciter,  what  course  must 

be  taken        .......  337 


INDEX. 


589 


EQUITY,  injunctions,  Continued. 

when  patent  must  be  established  without  injunc- 
tion       337,  338 

when  patent  must  be  established  after  injunction      337,  339 

when  the  answer  denies  the  validity  of  the  patent  340 

when  an  action  is  pending  against  another  party  341 

practice  of  the  court  in  dissolving,  reviving,  &c.  342 

motion  to  dissolve,  when  may  be  made      .         .  342 

after  trial  has  been  ordered         .         .         .  342 

while  an  action  is  pending  .         .         .  342 

while  plaintiff  is  preparing  to  bring  an  action  342 

after  trial  has  been  had       ....  343 

motion  for,  when  to  stand  over  .         .         .  344 

in  case  of  an  application  for  a  new  trial       .      344,345 

granted  as   matter  of  course,  after  a  judgment 

for  plaintiff 345 

account  of  profits  ordered  in  lieu  of   .         .         .      346,347 
when  not  dissolved  on  account  of  doubts  of  the 

validity  of  the  patent     .         .         .         .         .  349 

when  granted   against   one    who    has  used  the 

invention  by  permission         .         •         .         .  350 

a  good  defence  to      .         .         .         .         ,         .-  351 

prior  dedication  to  the  public      .         .         .     351-353 
are  always  special     ......  354 

when  applied  for  before  the  answer  is  filed         .  354 

remedy  in,  in  case  of  interfering  patents  .         .  p.  481 

EVIDENCE.     (&e  Action  AT  Law.) 

what  may  be  given  in,  under  the  plea  of  general 
issue        ..... 

two  kinds  of,  in  a  patent  cause 

of  title,  relates  to  what 

of  infringement  ... 

competent,  to  show  the  granting  of  the  patent 

prima  facie,  of  novelty 

negative,  when  to  be  offered  by  plaintiff 

effect  of  such  evidence 
of  novelty,  when  patentee's  own  declarations 
of  utility,  to  be  offered  by  plaintiff 
of  sufficiency  of  specifications 

nature  of  such  evidence 
who  may  give,  as  experts 

general  rule  of  determining 


270,  271 
356 
356 
356,  372 
357 
30,39,358 
359 
360 
361,  lb.  note. 
363 
364 
365 
155,  365-371 
365,  366,  lb.  note. 
depends    upon    the    nature    of   the    subject 

matter 366,  Jb.  note,  369 

50 


590 


INDEX. 


EVIDENCE,  Continued. 

persons  of  ordinary  skill        ....  155,366 
when  persons  thoroughly  scientific         .       367,  368,  370 

nature  and  scope  of,  to  explain  specifications          .  154,  371 

principles  of,  as  applied  to  the  question  of  identity  "372 

two  kinds  of,  applicable  to  this  question         .         .  373 

of  experts,  when  admissible           ....  375 

sufficiency  of,  how  far  determined  by  the  court     .  375,  376 

positive,  when  offered  by  defendant       .         .         .  377 

who  are  competent  to  give            ....  378 
copies  of  records,  when  to  be        .         .         .         pp.  474,  486 

EXAMINING  CLERKS, 

to  be  appointed  by  the  Commissioner             .         .  p.  490 

compensation  allowed  to       ....         .  p.  490 

EXECUTORS.     (See  Administrators  and  Executors.) 

EXPERIMENTS, 

unsuccessful,  do  not  prevent  subsequent  invention 


44,  lb. 
note,  360 
44,  45 
44,  note. 
51 


distinguished  from  invention 
when  presumed  not  to  be  invention 
antecedent,  by  others,  may  be  used  by  inventor 
EXPERTS, 

testimony  of,  when  resorted  to      .         .         .        124,  154,  223 

who  may  be  regarded  such  .         .         .         .       155,  365 

'  persons  of  ordinary  skill         ....       155,366 

depends  upon  the  nature  of  the  subject-matter       366,  lb. 

note,  369 
when  thoroughly  scientific  persons         .       367,  368,  370 
EXTENSION  OF  PATENT, 

allowed  by  statute 117,  186,  p.  482 

administrator  may  apply  for  ....  117 

right  to  grant,  vested  in  the  Commissioner  187,  p.  498 

cannot  be  for  a  longer  time  than  seven  years  .     187,  note. 

does  not  enure  to  the  benefit  of  assignees      .        118,  lb.  note. 
application  for,  to  whom  referred  ...  p.  498 


FEE, 


F. 

for  filing  caveat 

for  taking  out  patent 

for  renewal  of  patent 

for  extension  of  patent 

for  filing  disclaimer 

for  taking  out  patent  for  designs 


170,  p.  478 
175,  p.  477 
180,  p.  479 
p.  483 
287,  p.  489 
105 


INDEX. 


591 


FEE,  Continued, 

when  patentee  is  a  subject  of  the  king  of  Great  Britain 
for  recording  assignments       ..... 
FIRST  INVENTOR, 

alone,  entitled  to  a  patent     .... 

may  be  the  new  discoverer  of  a  lost  art 

meaning  of  in  our  statute     .... 

the  expression,  how  construed  in  England     . 

is  he  who  first  adapted  his  invention  to  use 

in  a  race  of  diligence 

notwithstanding  prior  experiments 

how  far  may  take  suggestions  from  others 

may  use  antecedent  experiments 

patentee  must  believe  himself  to  be 
FOREIGNER.     (See  Alien.) 
FOREIGN  INVENTION, 

introduction  of,  not  patentable 
FOREIGN  PATENT, 

when  does  not  prevent  a  patent  in  the  United  States  115,  p.  493 


175,  p.  477 
p.  499 

35,40,  114 
37,  38 

40,  JL  note, 

40,  lb.  note. 

40,  note,  43,  48 

43 

44,  48,  note. 

46-50 

51 

63 


114 


G. 

GENERAL   ISSUE,     (See  Action  at  Law.) 

may  be  pleaded  in  an  action  for  infringement 
defences  under,  without  notice      .         .         .         . 

requiring  notice    ...... 

GRANTEE.     {See  Assignee.) 

for  particular  district  may  bring  an  action  in  his 
own  name        ....... 


270,  p.  480 
274-277 
278-313 


259 


I. 
IDENTITY, 

involved  in  an  infringement 
what  is,  in  machinery 

in  a  manufacture 

in  the  application  of  a  principle     . 
IMPROVEMENT, 

a  test  of  novelty  .... 

when  it  shows  sufficiency  of  invention 
must  be  substantial       .... 
the  sabject-matter  of  a  patent 
several,  may  be  protected  by  one  patent 
what  is,  as  applied  to  machinery 
sufficient  to  sustain  a  patent,  how  tested 
patent  for,  how  made  serviceable 


220 
221-224 
225-227 
229  -  233 

9 

19,  20 

22,  lb.  note. 

82,  95-99 

94 

95 

96,99 

97 


592 


INDEX. 


IMPROVEMENT,  Continued. 

description  of,  in  specifications,  how  made 
patent  for,  how  infringed 
INFRINGEMENT, 

none,  where  there  is  real  improvement 
by  carrying  the  same  principles  into  effect 
what  is        .....         . 

not  defined  by  statute 

different  modes  of        ...         . 

by  making  patented  machine  for  use 

by  using  it  .  .         . 

by  selling  it         ....         . 

whether  by  making  for  experiment 

by  constructive  user 

not  by  selling  materials  of  a  machine     . 

not  by  selling  the  articles  produced  by  it 

by  consumption  of  a  composition 

Avhen,  by  making  to  order 

by  practising  an  art      . 

the  great  question  concerning 

involves  substantial  identity 

by  a  machine  which  incorporates  the  substance  of 

the  invention  .... 

not  where  there  is  a  material  alteration 
when  the  change  constitutes  a  mechanical  equiva 

lent         ...... 

of  a  manufacture  .... 

when  not  shown  by  similarity  of  structure 
mode  of  proving  .... 

burden  of  proof  of,  on  plaintiff 

when  the  subject-matter  is  the  application 

principle  ..... 

none,  where  there  is  a  substantive  invention 
how  tested  ..... 

none,  where  there  is  a  change  of  ingredients 
utility,  when  a  test  of  .  .         . 

relates  to  what  is  covered  by  the  patent 
when  subject-matter  is  a  combination    . 
when  patent  is  for  improvements 
damages  allowed  for  ... 

none,  before  the  patent  is  obtained 
remedy  for,  by  action  at  law 
may  be  restrained  by  injunctions 
by  marking,  penalty  for        . 


140 

246,  247 

19,  20 
8,  219,  223 

138,  220 
201 
202 
203 
203 
203 
204 

205,  206 

207,  Ih.  note. 

208 

212-214 
216 
217 
218 
220 


221 
222 

223,  224 
225 
226 
227 
227 


of  a 


250 


228-233 

234 

234-240 

241,  242 

243,  244 

245 

110,  245 

246,  247 

256,  p.  480 

255 

257 

314 

p.  497 


INDEX. 


593 


INJUNCTION.     {See  Equity.) 

granted  by  the  court,  to  restrain  infringements 


bill  for,  what  it  should  contain 

on  what  principles  granted 

application  for,  how  made 

not  granted  on  ex  parte  applications 

rule  for  granting,  before  trial 
three  cases  under 

prima  facie  right  to      .         .         . 

granting  of,  rests  in  discretion  of  the  court 

not   granted,    when    irreparable   mischief   would 
ensue  to  defendant 

nor  where  plaintiff  has  permitted  defendant  to  incur 
expense  ...... 

notwithstanding  defendant's  admissions 

perpetual,  only  granted  on  full  hearing 

motion  to  dissolve,  when  may  be  made 

motion  for,  when  to  stand  over     . 

when  granted  as  matter  of  course 

when  granted  against  one  using  by  permission 

perpetual,  a  good  defence  to         .         .         . 

is  always  special  ..... 

INSPECTION, 

of  works,  sometimes  ordered  by  the  court 
INTENTION, 

when  material  to  show  abandonment     . 
INVENTION, 

sufficiency  of,  to  support  a  patent 
process  of  reaching  immaterial 
may  result  from  accident   '  . 
result  of,  must  not  exclude  design 
tests  of       ....         , 
when  presumed 
a  frivolous,  not  patentable     . 
distinguished  from  new  use 
must  be  beneficial  to  society 
must  be  reduced  to  practice 
distinguished  from  experiment 
how  far  may  be  suggested  by  others 
when  abandoned,  renders  patent  invalid 
must  be  absolutely  new 
foreign,  when  not  to  affect  patent 
every  material  part  of,  must  be  new 
in  what  it  consists 
50* 


314 

320 

322 

322,  323 

323 

324,  325 

326  -  332 

328,  339,  342,  354 

314,  333 


333 

334 
335 
336 
342 
344 
345 
350 
351,  352 
354 

347 

303 


5,9, 

10,  15,  17,  18,  24 

6,  lb.  note. 

6,  10 

6,  10 

.        8,  9,  14 

15 

7,  22 

27 

28 

40,  note,  81. 

44,  45 

46-50 

d 

57,  60 

62 

63 

66 

.      70,  note. 

594  INDEX. 

INVENTION,  Continued. 

a  joint,  when  subject  of  a  patent  .         .         .  112 

not   patented,  whether  it  passes  to  assignees   in 

bankruptcy       .......  189 

principles  of,  remarks  upon  .         .         .        pp.  297-309 


JURY, 

province  of,  in  patent  causes        .         123,  124,  136,  390,  395,  397 

questions  of  fact  to  he  determined  by  .  .         .  379 

whether  patentee  was  the  inventor        .         .         .  380 

novelty  of  subject-matter      .....      380,401 

whether  renewed  patent  is  for  the  same  invention 

as  the  old  one  ......  381 

abandonment  of  the  invention        ....  381 

whether  the  means  employed  will  be  successful  382-384 

whether  the  specifications  claim  what  is  not  new  385,  391 

the  meaning  of  terms  of  art  ....      385,396 

facts  referred  to  as  part  of  the  description      .         .  394 

sufficiency  of  the  description         ....  395 

the  question  of  identity         .....  402 

JURISDICTION 

of  Congress 403,  404 

of  Circuit  Court 405,  406,  p.  482 

appellate,  of  Supreme  Court  of  United  States  405,  407,  p.  482 


LAW  AND  FACT.     {See  Court,  Jury.) 

questions  of             .......  379 

LETTERS-PATENT.     {See  Patent.) 

LIBRARY, 

for  the  use  of  the  Patent  office         ....  p.  484 
appropriations  for             .....         pp.  484,  492 

LICENSE, 

by  operation  of  statute,  before  patent  is  obtained       .  59 

what  amounts  to               ......  60 

distinguished  from  an  assignment              .         .         .  195-197 

when  assignable               ......  198 

how  construed         .....         197,  198,  lb.  note. 

LICENSEE, 

his  rights  as  against  the  patentee              .         .         .  195-200 

when  may  dispute  validity  of  the  patent             .         .  199,  200 

must  comply  with  the  conditions  of  the  license          .  200 


INDEX. 


595 


LIST  OF  PATENTS, 

to  be  made  by  Commissioner 
to  be  published 


p.  401 
p.  49-2 


M. 

MACHINE, 

when  the  subject  of  a  patent 
principles  of  .... 

novelty  in,  how  tested 
mere  effect  of,  not  patentable 

change  of  form  or  proportions  in,  when  a  discovery 
meaning  of,  in  the  statute        .... 
improvements  of,  when  patentable 
embraced  in  the  term  manufacture 
when  two  are  the  same  in  principle 
distinguished  from  manufacture 
when  two  may  be  embraced  in  one  patent 
drawings  of,  to  accompany  specifications 
materials  of,  when  to  be  stated  in  specifications 
patent  for,  how  infringed  .... 

MACHINIST, 

to  be  appointed  in  patent  office 
compensation  allowed  to  ... 

MANUFACTURE, 

when  the  subject  of  a  patent         .         .  2,88,100-102 

meaning  of  the  term  in  the  statute  of  monopolies 

70,  note,  71,  100 
used  in  a  literal  and  figurative  sense 
includes  the  process  of  maidng  a  thing 
a  new,  by  change  of  ingredients 
meaning  of,  in  our  statute 
distinguished  from  a  machine 
what  constitutes  novelty  in 
patent  for,  how  infringed 
MARKS, 

required  to  be  put  on  patented  articles  for  sale 
MARKS  OF  TRADESxMEN, 

the  subject  of  patents 
MESSENGER, 

of  patent  office,  how  appointed 
his  salary  .         .         .         .         • 

MISTAKES, 

in  patent,  how  corrected 


2,  3,  4,  6,  note,  93,  94 

.     3,  23,  note,  96,  note. 

3,  23,  lb.  note,  37 

4 

21 

93 

95  -  99 

71,  100 

78,  note. 

102 

II,  lb.  note. 

121 

162 

203  -  208 

p.  472 

p.  472 


71,  77 

72,  74,  101 

81 

102 

102 

2 

225-227 

p.  497 

106 

p.  472 
p.  472 

177 


596 


INDEX. 


PP 


70,71,74 

121,  p.  474 

p.  484 
487,  488 
p.  488 
p.  484 


MODE,     (See  Process.) 

of  producing  a  thing,  patentable 
MODELS, 

of  invention,  when  to  be  furnished  by  patentee 

to  be  classified  by  the  Commissioner 

duplicates  of,  in  certain  cases  to  be  procured 

compensation  for,  when  allowed 

to  be  exhibited  to  ihe  public 
MONEY,     (See  Tee.) 

when  to  be  paid  into  court 

for  patents,  when  to  be  returned 

carried  to  credit  of  patent  fund 

N. 
NEW  PATENT, 

may  be  issued,  on  surrender  of  the  old  one 
presumed  to  be  for  the  same  invention 
in  place  of  those  destroyed,  when  to  be  issued 
NOTICE, 

when  to  be  served  on  defendant 
to  be  construed  strictly 
kind  of,  in  actions  at  law 
NOVELTY, 

a  statute  requisite 

what  is,  in  machinery 

what  amount  of  thouifht  it  implies 

the  great  test  of  invention 

implies  more  than  a  frivolous  invention 

utility,  a  test  of        .         .         .         . 

some  evidence  of  to  be  offered 

slight  evidence  of,  sufficient 

prima  facie  evidence  o{ 

consistent  with  what  prior  use 

what  evidence  of,  beyond  patent  may 

plaintiff       

mode  of  proving 

when  in  doubt,  patentee  may  rest  on  patent     39,  note,  358  -  362 

two  issues  concerning  .....  41 


.      334,  350 

pp.  475,  491,495 

p.  491 


180,  p.  479 

181 

pp.  486,  496 

.      270,  323 

'.      272,  284 
.      285,  295 

1 

3,  23,  7iote,  25 
6,  If),  note. 
6,  note. 
7 
8,  15,  18,  28 
29 
29 
30,  39,  358 
31-40,  p.  492 
be   given    by 

39,  note, 
39,  note,  358  -  302 


how  far  consistent  with  suggestions  by  others 

inconsistent  with  prior  public  use  or  sale 

relates  to  other  countries  .... 

inconsistent  with  foreign  patent 

inconsistent  with  a  prior  description  in  a  public  work 

relates  to  the  whole  invention  .... 


46-50 
52 
62 
62 
62 
66 


INDEX. 


597 


NOVELTY,   Continued. 

failure  of,  lenders  patent  void 
test  of,  in  compositions  of  matter 


O. 


66,  283,  284 
104 


OATH, 

required  of  an  applicant  for  patent  .  121,  note,  V 

priwa/ade  proof  of  novelty 
form  of,  when  varied 
irregularity  in,  how  cured 
omission  of,  does  not  invalidate  patent 
required  of  officers  in  Patent  Office 
when  affirmation  may  be  substituted  for 
before  whom  taken  when  an  applicant  is  not  resident  of 
the  United  States 
OFFICERS    OF   PATENT   OFFICE, 

a  commissioner 

a  chief  clerk 

two  examining  clerks 

two  copying-  clerks 

two  principal  examiners 

four  assistant  examiners  .         .         .         pp. 

a  draughtsman 

a  machinist 

a  messenger 

two  other  permanent  clerks 

temporary  clerks 

disqualified  from  taking  interest  in  patents 

to  make  oath  .... 

compensation  allowed  to   .     pp.  471,  472,  490, 


2,  p.  474 

30,  174 

114 

174 

174 

p.  472 

p.  491 

p.  497 

p.  471 
p.  471 

p.  490 
p.  499 
p.  498 

492, 498 
p.  472 
p.  472 
p.  472 
p.  472 

490, 492 
492 
472 

498,  499 


PATENT, 


subject-matter  of,  {See  Subject-Matter.) 

principles  of  law  of,         .         .         .         .      ■    .         .  2,70 

itself,  evidence  of  novelty        ....  30,  39,  358 

which  of  two  applicants  is  entitled  to       .         .         .  43,  44 

should  contain  no  more  than  is  necessary  .         .  67 

design  of  law  of  ......        70,  244 

construed  with  specifications  .         .         70,  note,  122,  125 

cannot  be  more  extensive  than  the  invention 

96,  note,  110,  note,  131,  140,  386 
may  cover  two  machines  ....         \\\,lb  note. 

when  to  be  joint  \12,  lb.  note. 


598 


INDEX. 


PATENT,  Continued. 

cannot  cover  distinct  inventions 
cannot  be  both  joint  and  several 
cannot  be  two,  for  same  invention 
persons  entitled  to  take 


108,  111,  Tb.noie. 

.    ^112,  note. 

113 

114-117,  pp.  473,  496 


foreign,  when  does  not  prevent  a  patent  in  United  States 

115,  116,  p.  493 
construction  of,  by  the  court 
to  be  construed  liberally 
application  for,  how  made 
how  to  be  issued 
mistakes  in,  how  corrected 
when  surrendered  and  new  one  taken  out 
time  for  which  renewed  patent  is  granted 
how  extended  .... 

how  may  be  assigned 
assignment  of,  when  to  be  recorded 
for  how  long  time  granted 
extent  of,  as  applied  to  machinery 
infringement  of,  (See  Infringement.) 
consideration  for  granting 
rendered  invalid  by  fraud 
effect  of  a  failure  of  utility  on 
damages  for  infringing 

when  granted,  relates  back  to  the  time  of  invention 
remedy  for  infringing,  by  action  at  law 
protected  by  injunctions  .... 

to  be  signed  by  Secretary  of  State  and  by  Commis 

sioner  of  Patents  ..... 

additions  to,  when  may  be  made  by  patentee 

180,  pp.  479,  488,  489 


123,  130,  136,  150 

.       126,  132 

171,  p.  473 

176,  pp.  473,  488 

177 

180,  184,  p.  479 

183 

.      186,  187 

188,  189,  p.  478 

190,  191,  p.  478 

201 

203 

>.  202 

.       •  .         66,  246 

247 

.       248,  249 

.      250  -  254 

255 

257 

314 

176,  p.  473 


interfering,  remedy  in  case  of  .... 

issued  prior  to  15th  Dec.  1836,  may  be  recorded  anew 
list  of  patents  to  be  made  annually 
list  of  patents  to  be  published  .... 

when  may  be  dated  back         ..... 
PATENTEE, 

who  may  be  under  the  statute       .... 

may  be  an  alien,  when  .         •  .         .         . 

presumed  not  to  claim  things  in  use 

relations  of,  to  a  licensee,  in  regard  to  the  validity 
of  the  patent    .         .         . 

penalty  for  infringing  his  right  by  marking 

to  mark  articles  offered  for  sale 


p- 

481 

p- 

485 

p- 

491 

p- 

492 

p- 

477 

114 

115 

132, 

391 

199 

P- 

497 

P- 

497 

INDEX. 


599 


PATENT  OFFICE, 

attached  to  the  department  of  State 
officers  of,  to  make  oath       .... 

PENALTY, 

for  infringing  rights  of  patentee  by  marking     . 
how  recoverable  ..... 

PETITION, 

application  for  patent  made  by      .  .         . 

PLEADING  AND  DEFENCES.     {See  Action  at  Law.) 
in  actions  at  law  ..... 

PRESIDENT, 

to  appoint  Commissioner  of  Patents 

PRINCIPLE, 

of  a  machine,  what  is  ..... 
an  abstract,  not  patentable    . 
embodiment  of,  patentable 
~  when  it  becomes  a  process 

application  of,  what  constitutes     . 

application  of,  not  always  patentable 

of  an  invention,  remarks  on 

import  of  the  term,  as  applied  to  science 

use  of  the  term,  as  applied  to  practice 

a  principle  eo  nomine  .         .         .         .         . 

PRINCIPAL  EXAMINERS, 

two,  to  be  appointed  by  Commissioner 
application  for  extension  of  patent  to  be  referred  to 
compensation  allowed  to  .         .         .         . 

PRINTED  PUBLICATION.     (See  Public  Work.) 

PROCESS, 

when  the  subject  of  a  patent  .         .         .         . 


471 

472 

497 
497 

171 

270 


t  p.  471 

3,  23,  note. 

72,  75,  143,  p.  297 

72,  74-79,  p.  297 

72,  74,  143,  7iote. 

.     83-88,  p.  298 

.    85,  p.  298 

.       pp.  297-309 

pp.  298  -  300 

pp.  300-301 

p.  309 


498 
498 
498 


71,  74 


when  a  principle  becomes 
PROFERT  OF  LETTERS-PATENT, 
to  be  made  in  the  declaration 
effect  of      ...         . 
in  a  bill  for  injunction 


72,  74,  143,  note. 

266 

.     266,  note. 

320 


PROOF.     (See  Evidence.) 

burden  of,  to  show  infiingement,  on  plaintiff        .         .  227 

PUBLIC   USE, 

prior,  destroys  right  to  a  patent            ...        52,  296 
meaning  of 53,  297,  304 

PUBLIC  WORK, 

prior  description  in,  inconsistent  with  novelty  62,  283 

what  is 65,290 


600  INDEX. 

PURPOSE, 

in  the  abstract,  not  patentable       ....  27 

Q. 
QUIA  TIMET, 

bill,  an  ordinary  remedial  process  in  equity  .     321,  note. 

R. 

RECORDING  OF  ASSIGNMENT, 

proof  of,  when  may  be  given  in  actions  .         .  269 

when  may  be  anew      ......  p.  485 

RE-INVENTION.     (See  Invention.) 

REMEDY.     [See  Action  at  Law  ;  Equity.) 

for  infringement  of  patent -     257,314 

RENEWAL, 

of  patent,  when  allowed  by  statute        .         .         .  180 

when  may  be  made 184 

REPUGNANCY, 

between  specifications  and  patent,  effect  of  .  125 

RESULT, 

a  test  of  invention  ......  14,  18 

RULE  OF  DAMAGES.     (See  Damages.) 

for  infringement  of  patent  ....  250 


SCIENCE, 

discoveries  in,  not  patentable 
SEAL, 

for  Patent  Office,  how  provided 
SECRETARY  OF  STATE, 

to  sign  patents  ..... 

may  correct  mistakes  in  specifications 
SERVANT, 

suggestions  by,  when  consistent  with  novelty 

manual  dexterity  of,  may  be  used  by  inventor 

when  the  principle  is  suggested  by 
SPECIFICATIONS, 

must  agree  with  the  patent  .         .  70,  note,  122,  125 

of  former  patent,  when  read  in  an  action  for  in- 
fringement      .......  98 


75, 

76, 

P- 

301 

• 

P- 

472 

176 

P- 

473 
177 

49,  50 

49 

49 

statute  requirements  of        .  121,  153,  163 

drawings  annexed  to,  a  part  of     . 

two  objects  of      .....         . 

rules  for  preparing       ..... 


165,  p.  473 
122,  163 
128,  129   . 
130,  152 


INDEX.  601 

SPECIFICATIONS,  Continued. 

must  not  be  ambiguous  .....       ]30    131 

must  distinguish  what  is  old  from  what  is  new      .      131,  133 
to  be  liberally  construed       .....  132 

how  to  describe  what  is  old  ....  134 

to  state  the  best  mode  of  producing  an  effect        135,  157,  I6I 
to  be  construed  by  the  court  .        123,  130,  136,  150,  385 

how  far  to  be  judged  of  by  the  jury     .         124,  136,  154,  385 
must  not  contain  useless  descriptions    .         .         .  173 

should  describe  every  thing  essential     .  138,  lb.  note,  157 

must  not  misuse  terms  .....  139 

how  to  describe  an  improvement  .         .         .     140  -  142 

must  disclose  a  patentable  subject         .         .         .      143,  144 
how  to  describe  the  application  of  a  principle         .     145-149 
how  construed,  when  several  things  are  described  in  150 

must  not  mislead  the  public  ....      151,159 

addressed  to  persons  of  competent  skill         .     124,154-156, 

161,  369 
may  contain  technical  terms  ....      154,  161 

must  not  require  experiments        ....  156 

slight  defects  in,  may  render  patent  void       .         .  157 

when  to  state  how  substances  may  be  procured      .      158,  159 
when  may  require  experiments     ....  ,   160 

need  not  describe  what         .....      161,  162 

when  to  state  materials  of  a  machine    .         .         .  162 

why  to  be  accompanied  with  drawings  .         .      163,  164 

how  attested        .......  165 

amendments  of,  allowed  by  statute       .  166,  pp.  488,  499 

by  disclaimers     .......      167-  169 

synopsis  of  English  cases  concerning  .       pp.  179-182 

common  defects  in,  according  to  English  law        pp.  182-206 

1.  ambiguous  terms      ....       pp.  182-184 

2.  omission  of  necessary  descriptions    pp    182,  184-187 
3. 'claiming  what  is  not  original     .         pp.  182,  187,  188 

4.  things  put  in  to  mislead    .         .         pp.  182,  188- 190 

5.  incorrect  drawings   .         .         .         pp.  182,  190,  191 

6.  one  of  different  ways  or  ingredients  fails  pp.  182, 

191,  192 

7.  one  of  several  effects  specified  is  not  pro- 

duced        ....         pp.  182,  192-194 

8.  the   things    described    are    not    the    best 

known  to  the  patentee         .        pp.  182,  194  -  197 
general  observations  on,  as  applied  to  machinery  pp.  197,  198 
improvements      .        .        .       pp.  198-202 
51 


602 


SPECIFICATIONS,    Continued. 

metliod  reduced  to  practice 
chemical  discoveries    . 
mail  u  fact  iires 
a  disclaimer  of,  allowed  by  statute 
SUBJECT-MATTER, 

must  be  new  and  useful 
when  may  be  an  art     . 
a  machine 
a  manufacture 
a  composiiion  of  matter 
an  improvement 
cannot  be  mere  theory 


p   204 

p.  204 

pp.  204,  205 

pp.  205,  206 


1,  16 

.     2,90-92 

.      2,  3,  4,  93,  94 

2.  100-102 

2,  1.03,  104 

9,  19,  20,  82,  94-99,  140 

2,70 


mere  purpose  (^  effect   .         .       4,  27,  75,  96,  note. 
the  application  of  what  is  old,  to  a  new 

purpose  .         .         .         .         4,  26,  27,  87 

must  be  substantially  new    .         .         .  6,  7,  17,  27,  note. 


rot  a  frivolous  invention 

when  substitution  may  be     .         .         .      ' 

when  a  new  application  of  known  agents 

when  a  new  combination 

must  be  beneficial  to  society 

cannot  be  an  inchoate  idea 

an  elementary  principle 

a  science        .... 

when  a  process  or  application  of  a  principle 


.      7,  22,  28 

8,  11 

10,  79,  81,  82 

24,  73,  94,  110 

17,  28 

47 

70,  75,  78,  143 

75,  76,  p.  301 

74-79,  81, 


85,  143,  note. 
may  be  a  new  contrivance  to  effect  an  old  object    .  87 

may  be  designs 105,  106,  p.  496 

must  possess  unity       .'.....       107,  108 

classification  of,  under  the  statute  of  monopolies  69  -  72 

under  our  statute 

SUBSTITUTION, 

when  the  subject  of  a  patent 
an  obvious,  not  an  invention 
SUFFICIENCY  OF  INVENTION. 

(See  Invention  ;  Novelty;  Utility) 
SUGGESTIONS, 

by  others,  vphen  consistent  with  invention 
abstract,  not  patentable 
of  possibility,  not  invention 
of  a  servant,  effect  of            ... 
of  principle,  is  invention 
in  course  of  experiment,  may  be  adopted  by  an 
inventor 49 


89  - 106 

8,  11 

7 


46-49 
47 
48 
49 
49 


INDEX. 


SUPREME  COURT  OF  UNITED  STATES, 

its  appellate  power,  in  patent  causes     . 

SURRENDER, 

of  patent,  when  may  be  made,  and  new  one  taken 


603 

405,  407,  p.  482 


out 


180,  p.  479 


TEMPORARY  BOARD  OF  COMMISSIONERS, 

when  appointed            ..... 

p.  487 

their  duti  s           ...... 

TEMPORARY  CLERKS, 

p.  487 

when  may  be  appointed       .... 
TERM, 

p.  490 

for  which  patent  is  granted          .... 

201 

extension  of       ......         . 

186 

THEORY, 

in  the  abstract,  not  patentable 
THOUGHT, 

2 

amount  of,  sufBcient  to  constitute  invention 

6 

TREASURER, 

when  to  return  money  paid  into  the  treasury 

pp.  475, 491, 

495 

U. 

UNITY, 

of  subject-matter,  required  by  statute 

107 

in  case  of  two  distinct  inventions 

108,  HI 

how  determined          ...... 

109 

when  consistent  with  combinations 

110 

in  case  of  several  improvements 

111,  lb.  note. 

in  case  of  a  joint  invention           .... 

112 

UTILITY, 

a  statute  requisite   ...... 

1 

when  a  test  of  invention           ...             8 

9,  15,  16,  28 

meaning  of  in  American  law    .... 

16,  28,  383 

degree  of,  not  material    ..... 

28 

relates  to  the  whole  invention 

67 

failure  of,  its  effects  upon  the  patent 

.      248, 249 

w. 


WITNESS, 


who  are  not  incompetent      .         .         .         .         . 
one  who  has  used  patented  machine 
patentee  of  another  patent,  who  sold  the  ma- 
chine to  defendant 


378 
378 

378 


604 


INDEX. 


378 

378 


WITNESS,  Continued, 

patentee,  who  has  assigned  his  whole  interest 
a  licensee,  for  the  patent        .         .         •         • 

WRIT  OF  ERROR, 

lies  to  Supreme  Court  of  United  States  .  407,  p.  482 


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